Appeal No. 1997-0234
Application 08/219,540
indefiniteness. The language “proximal relationship” and “object” are admittedly broad terms; however,
it is our view that the skilled artisan, having considered the specification in its entirety, would have no
difficulty ascertaining the scope of this particular phraseology. We reach a similar conclusion with
respect to the “monitoring” language in the preamble. Contrary to the Examiner’s contention, it is our
view that the skilled artisan would recognize from Appellants’ specification that the claimed
“monitoring” operation encompasses a step of rotating a motor shaft, at the very least during a learning
cycle to establish a reference zero position for future machining operations.
Although, as discussed above, we find no ambiguity or lack of clarity in much of the claim
language questioned by the Examiner, we do agree with the Examiner that the term “hypothetical” as
used in the present claimed context of “calculating a hypothetical zero position” is indefinite. As pointed
out by the Examiner (Answer, page 5), the term “hypothetical” is not used in the specification leaving it
up to the reader to determine the meaning of the phraseology. While the mere fact that a term used in a
claim has no antecedent basis in the specification does not necessarily mean that such term is indefinite,
applicants for patent are, nonetheless, under a burden to ensure that terms used to define an invention
do so with a reasonable degree of clarity and precision. Considering the present factual situation, we
are of the view that Appellants have not satisfied this burden.
In addition, we note that, while the Examiner and Appellants have offered differing definitions of
the term “hypothetical”, we agree with the Examiner that the accepted meaning of the term
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