Appeal No. 96-1983
Application No. 08/222,784
circuit. In the final rejection, the examiner simply included
the other claims in the rejection as having similar errors to
claim 1 and as depending from claim 1. In the answer,
however, the examiner has specifically identified some of
these “similar” errors in claims 2, 4 and 5 for the first
time. The specific errors noted in claims 2, 4 and 5 were not
designated as a new ground of rejection, and appellants have
not responded to the examiner’s specific objections with
respect to dependent claims 2, 4 and 5.
Appellants have specifically responded to each of the
objections raised by the examiner with respect to claim 1. In
general, appellants argue that the scope of the invention as
recited in claim 1, and as recited in all claims, would be
perfectly clear to the person having ordinary skill in the art
and the examiner’s rejection is completely unwarranted [brief,
pages 6-12].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
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