Appeal No. 95-2502 Application No. 07/763,625 that the claimed system includes the data bank and the knowledge base described on pages 32-34 of the specification. Claim 20 therefore defines the metes and bounds of the invention with a reasonable degree of precision to satisfy the test for definiteness in In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976). With regard to dependent claims 4 through 9, the examiner’s reasons set forth on pages 3 and 5 of the answer for rejecting these claims under the second paragraph of § 112 are unclear. In part, the examiner seems to be concerned with the fact that these claims are not limited to the order in which certain method steps are performed. Such an omission does not necessarily render the claims indefinite. Instead, such an omission here merely deals with the breadth of the claims. Breadth, however, is not to be confused with indefiniteness. In re Miller, 441 F.2d 689, 691, 169 USPQ 597, 600 (CCPA 1971). We nevertheless consider claims 4 through 9 to be indefinite for reasons that follow. It is unclear whether appellants intended the processing step of claim 4 to merely recite further details of the 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007