Appeal No. 1998-0515
Application 08/425196
Turning to the specific items in claim 1 identified by the examiner, we note initially that the test
for indefiniteness under § 112, second paragraph, is "whether the claim language, when read by a
person 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) (emphasis added). Applying this test, we do not agree with
the examiner that "the length" (line 3) lacks antecedent basis, since this term refers to "strips," which,
being elongated members, necessarily have a length. As for the fold recited in line 3, it is clear from
appellant's disclosure in Fig. 2 and page 10, lines 20 and 21 concerning fold 7, how a single fold can
form a lip, a long leg and a short leg, as claimed. We also do not agree that the phrase "whereby a
plurality may be fastened parallel to each other" (line 15) is indefinite, since it merely states a possible
use of the claimed strips; likewise, the "whereby" clauses beginning on lines 40 and 47 simply state
results of using the claimed apparatus, and add nothing to the patentability or substance of the claim.
As such, they do not render the claim indefinite per se. See Texas Instruments Inc.v. Int'l. Trade
Comm., 988 F.2d 1165, 1172, 26 USPQ2d 1018, 1023 (Fed. Cir. 1993), citing Israel v. Creswell,
166 F.2d 153, 156, 76 USPQ 594, 597 (CCPA 1948).
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