Appeal No. 96-0004
Application No. 08/147,759
prior to the analysis of whether the claimed subject matter is
based on an adequate written description in the originally
filed specification. See In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971). Thus, as the examiner reasons
in his answer at page 5, since “the claims are unclear as to
what the invention is... how can it be adequately described”.
However, for the reasons set forth in appellant’s briefs, we
agree that the claims have not been properly rejected under
either paragraph of 35 U.S.C. § 112.
With respect to the question as to whether appealed
claims 23-33 are indefinite under the second paragraph of 35
U.S.C.
§ 112, the examiner points out that these claims define the
invention in terms of physical properties without reference to
specific glass compositions. We agree with appellant that the
language referring to the physical properties in the rejected
claims is reasonably precise and sufficiently definite to
provide a “clear-cut indication of the scope of subject matter
embraced" by the rejected claims. In re Swinehart, 439 F.2d
210, 214, 169 USPQ 226, 229 (CCPA 1971). This ground of
rejection is, accordingly, reversed.
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007