Appeal No. 1996-3623
Application No. 08/114,546
rather than under 35 U.S.C. §112, second paragraph. See In re Hyatt, 708 F.2d 712,
715, 218 USPQ 195, 197 (Fed. Cir. 1983) citing In re Borkowski, 442 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970). We find that the terms used in the claims when
read in light of the specification provide a reasonable degree of precision regarding the
metes and bounds of the claimed invention.
The examiner further rejected claim 1 based on the language concerning “storing
information related . . .” and stated that “[t]he claim, as drafted, reads on
virtually any frame buffer or video memory.” (Examiner's answer, page 4.) Clearly,
this is an improper application of 35 U.S.C. § 112, second paragraph. The Examiner is
arguing the breadth of the claim rather than a deficiency in determining the metes and
bounds of the language of the claim.
With respect to claim 12, the Examiner has not set forth a complete statement of the
deficiency in the language of the claim. (See answer at page 6.) Therefore, we will not
sustain the rejection of claim 12.
With respect to claim 16, the Examiner rejects the claims on a similar basis as
claim 1. Similarly, we agree with appellants argument that the meaning of these terms is
clear and not in contradiction to the use in the prior art. Since the skilled artisans
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007