Appeal No. 96-0763 Page 6
Application No. 07/840,345
the examiner’s rejection for essentially those reasons
expressed in the Answer. However, we will not sustain the
rejection under the second paragraph of 35 U.S.C. § 112.
The Rejection Under 35 U.S.C. § 112
The legal standard for definiteness under the second
paragraph of 35 U.S.C. § 112 is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The first inquiry is to determine whether the
claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
The examiner’s position is that the phrase “forming an
inorganic film on the colored layer” is indefinite due to its
breadth, Answer, page 5. However, breadth itself is not
indefinite. In re Gardner, 427 F.2d 786, 788, 166 USPQ 138,
140 (CCPA 1970). The definiteness of the language employed
must be analyzed not in a vacuum, but in light of the teachings
of the particular application. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). Applying the analysis set
forth above, appellant’s specification, page 7, discloses SiO2
and other inorganic films. One of ordinary skill in art
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007