Appeal No. 95-2245
Application No. 08,011,563
those reasons set forth in the Brief. We add the following
primarily for emphasis.
Indefiniteness
The purpose of the second paragraph of Section 112 is to
basically insure, with a reasonable degree of particularity,
an adequate notification of the metes and bounds of what is
being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970). As the court stated in In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), the
determination of whether the claims of an application satisfy
the requirements of the second paragraph of Section 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
It is here where the definiteness of language
employed must be analyzed -- not in a vacuum, but
always in light of the teachings of the prior art
and of the particular application disclosure as it
would be interpreted by one possessing the ordinary
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Here, the examiner argues that the meaning of “a chloride
process that has a by-product of titanium dioxide” is unclear
under 35 U.S.C. § 112, second paragraph. In so arguing, the
examiner ignores the teachings of the application disclosure.
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