Appeal No. 96-2094
Application 08/282,783
makes the claims indefinite “since it is impossible to
determine whether the claimed control lever 4 is structurally
required to be pivoted and moved through a cable pulling
stroke based on the context of the claims per se” (answer,
page 8; emphasis in original) is not well taken. First, the
contention is founded on the erroneous assumption that claims
should be read in a vacuum. However, as noted above, in
evaluating a claim for compliance with the second paragraph of
§ 112, the content of the claims must be analyzed in light of
the underlying application disclosure as it would be
interpreted by the ordinarily skilled artisan. In re Johnson,
558 F.2d at 1016, 194 USPQ at 194. Second, the examiner
appears to be of the view that the use of functional language
in claim drafting is per se improper. However, there is
nothing intrinsically wrong with claiming something in terms
of what it does rather that what it is. In re Swinehart, 439
F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971). While the
appealed claims may not employ language preferred by the
examiner, this circumstance does not make them indefinite.
Instead, it simply makes them broad. Breadth, however, is not
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