Appeal No. 97-0225
Application No. 08/357,789
We consider first the examiner’s rejection of claims 1,
6, 8 and 21 through 26 under 35 U.S.C. § 112, second
paragraph, as being indefinite. In determining whether claim
language runs afoul of the second paragraph of 35 U.S.C. §
112, we must analyze the definiteness of the language employed
in claims not in a vacuum, but always in light of the
teachings of the prior art and the application disclosure as
it would be interpreted by one possessing the ordinary level
of skill in the pertinent art. In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re Angstadt, 537
F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976). The claims are
deemed definite so long as they reasonably apprise one of
ordinary skill in the art of their scope. In re Warmerdam, 33
F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). We
are mindful that the examiner has the initial burden of
demonstrating indefiniteness of the claims. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner initially argues (Answer, page 5) that
"[t]he linking bonds for the bisacrylamide and
bismethacrylamide R groups are not shown in claim 1."
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