Appeal No. 1997-0234
Application 08/219,540
“hypothetical” is “conjectural or suppositional” (Answer, page 5). While a term used in the claims may
be given a special meaning in the description of the invention, generally no term may be given a meaning
repugnant to the usual meaning of the term. In re Hill, 161 F.2d 367, 73 USPQ 482 (CCPA 1947).
Further, Appellants have made no showing that the definition of “hypothetical” offered in the Brief, i.e.
“conditional” (Brief, page 8) is accepted usage in the art of machine tool positioning. When there is
more than one definition for a term, it is incumbent upon applicant for patent to make clear which
definition is being relied on to claim the invention. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA
1971). It is our view that, considering the entire context of the claimed invention, there is nothing
“hypothetical” about a zero position calculated from values representing angular degrees of rotation of a
shaft. Accordingly, the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of independent claim
8, as well as claims 9 and 10 dependent thereon, is sustained.
With respect to independent claim 11, after considering the respective positions of Appellants
and the Examiner, we will sustain the indefiniteness rejection of this claim as well. While we do not
agree with the Examiner’s contention that “monitoring” would not encompass the determination of an
angular rotational relationship of a shaft in different directions, we do agree that the last recited means
statement in claim 11 does not define the invention in a manner consistent with the description in the
specification. Although the terms of a claim may appear to be definite, inconsistency with the
specification disclosure or prior art teachings may make an otherwise definite claim take on an
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