Appeal No. 97-0840
Application 08/159,405
Therefore the examiner concludes that the claims are
“incomplete and indefinite” (Id.).
“The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope.”
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). The definiteness of language employed in a
claim must be analyzed, not in a vacuum, but always in light
of the teachings of the prior art and the particular
specification disclosure. In re Angstadt, 537 F.2d 498, 501,
190 USPQ 214, 217 (CCPA 1976).
The cited prior art attached to appellants’ brief, as
well as previously cited British Patent No. 1 407 065 to Beck,
clearly shows the determination and calculation of various
degrees of metamerism. Appellants’ specification, at pages 2-
6 (see the Brief, pages 5-7), describes in detail how the
printing ink with the desired properties is formulated. The
burden is on the examiner to show why one of ordinary skill in
the art would not be apprised of the scope of the claims on
appeal. See generally In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We determine that the
examiner has not met this burden by failing to show why one of
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