Appeal No. 1997-3146
Application 08/558,670
and distinctly claim Appellants' invention. The Examiner
argues that Appellants' recital that the user selects a given
load capacitance by inputting a number into the input device
is not correct. The Examiner also argues that the claim
language is also indefinite because the phrase "in parallel"
is indefinite because no details have been given in the
specification or claims as to how the branches 16A through 16D
are "in parallel."
Analysis of 35 U.S.C. § 112, second paragraph,
should begin with the determination of whether claims set out
and circumscribe the particular area with a reasonable degree
of precision and particularity; it is here where definiteness
of the language must be analyzed, not in a vacuum, but always
in light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977), citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (1971). Furthermore, our reviewing court points out that
a claim which is of such breadth that it reads on subject
matter disclosed in the prior art is rejected under 35 U.S.C.
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