Appeal No. 97-0734 Page 5
Application No. 08/058,592
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
With this as background, we analyze the specific
rejections under 35 U.S.C. § 112, second paragraph, made by
the examiner of the claims on appeal.
The examiner determined (answer, pp. 3-4) that
[t]he further limitation recited in claim 7, individual
thinner wales, is inconsistent with the independent claim
1 limitation of grouped thinner wales. Likewise, the
further limitation recited in Claim 9, individual
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