Appeal No. 1997-0179
Application 08/251,054
independent claims 1 and 5 on appeal. It is our view that the prior art reference to Fischer and the level
of skill in the particular art would not have suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 1 to 8. We also find that any conclusion of obviousness of the
invention recited in the claims on appeal would necessarily have involved the improper use of hindsight.
Accordingly, we will reverse the decision of the examiner rejecting claims 1 to 8 under 35 U.S.C. §
112, second paragraph, and we will reverse the decision of the examiner rejecting claims 1 to 8 under
35 U.S.C. § 103 over Fischer.
Rejection of Claims 1 to 8 Under 35 U.S.C. § 112, Second Paragraph
With respect to 35 U.S.C. § 112, second paragraph, it is to be noted that to comply with the
requirements of the cited paragraph, 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 and the teachings of
the prior art as it would be by the artisan. Note In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
194 (CCPA 1977) and In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Breadth of a claim is not to be equated with indefiniteness. If the scope of the subject matter embraced
by the claim is clear, then the claims comply with 35 U.S.C. § 112, second paragraph. See MPEP §
2173.04. In this case, we find that although the claims on appeal are very broad they are reasonably
precise in light of the disclosure and the prior art.
Appellant argues that all of the claims on appeal are definite and properly point out and
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