Appeal No. 95-3698 Page 2
Application No. 08/006,717
reversed the examiner's rejection of claims 5 through 7 and 27
through 32 under 35 U.S.C. § 103 and added a new rejection of
claims 5 through 7 and 27 through 32 under 35 U.S.C. § 112,
second paragraph, pursuant to provisions of 37 CFR § 1.196(b).
On pages 7-8 of our decision we stated
Claims 5 through 7 and 27 through 32 are rejected
under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention.
Claims drafted in means-plus-function format are
subject to the definiteness requirement of 35 U.S.C. § 112, 4
second paragraph:
[I]f one employs means-plus-function language in a
claim, one must set forth in the specification an
adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim
the invention as required by the second paragraph of
section 112.
In re Donaldson, 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850
(Fed. Cir. 1994) (in banc); see also In re Dossel, 115
4Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
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