Appeal No. 97-2481
Application No. 08/480,964
Claims 1 and 2 stand finally rejected on the following
grounds:
(1) Unpatentable under 35 U.S.C. § 102(f), on the ground that the
claimed subject matter was invented by Jerry E. Ponesmith;
(2) Unpatentable over APA in view of Reynolds and Anderson, under
35 U.S.C. § 103.
Rejection Under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 1 and 2 are rejected
for failure to comply with the second paragraph of 35 U.S.C.
§ 112.
The test for compliance with § 112, second paragraph, is
whether the claim language, when read by one
of ordinary skill in the art in light of the
specification, describes the subject matter
with sufficient precision that the bounds of
the claimed subject matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
See also In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d, 1754,
1759 (Fed. Cir. 1994). ("The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of
its scope").
In the present case, both claims recite "so as . . . to
provide a substantial increase in both differential and common
mode inductances" (emphasis added). The use of a term of degree,
such as "substantial," in a claim does not render the claim
3
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