Appeal No. 1997-0234
Application 08/219,540
The general rule is that 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 as it would be by the artisan.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability of the claim
language depends on whether one of ordinary skill in the art would understand what is claimed in light
of the specification. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984).
The Examiner’s 35 U.S.C. § 112, second paragraph, rejection raises several issues as to the
clarity of the claim language of the appealed claims. Initially, the Examiner asserts (Answer, page 4) the
impropriety of using “providing” steps in a method claim to recite a structural working environment for a
process. In response, Appellants, citing Ex parte Dammers, 155 USPQ 284 (Bd. App. 1961), argue
(Brief, page 6) that structural limitations in method claims are not inherently objectionable, an argument
with which we agree. The Examiner has provided no support on the record for the position that the
step of “providing” a structure is not permissible language in a method claim. The Examiner’s
comments in the first paragraph of page 4 of the Answer suggest a lack of weight be given to such
language. The breadth of a term, however, should not be equated with indefiniteness. In re Miller, 441
F. 2d 689, 169 USPQ 597 (CCPA 1971).
With regard to the claim language “mounting said feeler pin in proximal relationship to a first and
second object”, it is again our view that the Examiner’s concern is a question of breadth and not
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