Appeal No. 96-2675
Application No. 08/299,760
finding of obviousness-type double patenting is not
sustainable.
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, “other useful
articles,” is indefinite and unspecified, Answer, page 3.
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 6, discloses a substantial
number of articles which fall within the scope of the phrase,
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