Appeal No. 1996-2369 Page 5
Application No. 08/191,723
addresses the definiteness of claim 1 and the nonobviousness
of claims 1, 3, and 5-8.
Definiteness of Claim 1
Regarding claim 1, the examiner alleges, “it is not clear
that the address data of the first number of bits are outside
of the display ... and the address data of the second number
of bits are also outside of the display space.” (Examiner’s
Answer at 3.) The appellants offer the following response.
[T]he "data regulating means" clause clearly
specifies that regulation is required where the
first number of address data bits is incorrect and
is for a display position outside the addresses in
the display space, but which when unregulated may
result in an undesired display within the display
space, the first number of bits is logically
combined with a predetermined number of extended
bits to positively cause the regulated bits of the
address data to be within an addressing range
outside the display space. (Appeal Br. at 10.)
We agree with the appellants.
The test for the definiteness of a claim is whether one
skilled in the art would understand the bounds of the claim
when read in light of the specification. If the claim read in
light of the specification would reasonably apprise one so
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