Ex parte MCBRYDE - Page 8




                     Appeal No. 98-2086                                                                                                                                                
                     Application 08/539,353                                                                                                                                            


                                The second paragraph of § 112 requires claims to set out                                                                                               
                     and circumscribe a particular area with a reasonable degree of                                                                                                    
                     precision and particularity.  In re Johnson, 558 F.2d 1008,                                                                                                       
                     1015, 194 USPQ 187, 193 (CCPA 1977).  In determining whether                                                                                                      
                     this standard is met, the definiteness of the language                                                                                                            
                     employed in the claims must be analyzed, not in a vacuum, but                                                                                                     
                     always in light of the teachings of the prior art and of the                                                                                                      
                     particular application disclosure as it would be interpreted                                                                                                      
                     by one possessing the ordinary level of skill in the pertinent                                                                                                    
                     art.  Id.                                                                                                                                                         
                                In the present case, the appellant's disclosure indicates                                                                                              
                     that the aperture and "L" shaped member recited in claim 3 and                                                                                                    
                     the first and second mating cylinder members which form a                                                                                                         
                     hinge means recited in parent claim 1 are mutually exclusive                                                                                                      
                     characteristics of different locking apparatus embodiments.                                                                                                       
                     The recitation of both in claim 3 by virtue of its dependency                                                                                                     
                     from claim 1 renders the scope of claims 3 and 6 unclear.                                                                  2                                      

                                2 Although the following informalities are not serious                                                                                                 
                     enough in and of themselves to render the involved claims                                                                                                         
                     indefinite, they are nonetheless deserving of correction in                                                                                                       
                     the event of further prosecution before the examiner.  The                                                                                                        
                     preambles of dependent claims 2, 5 and 6 ("The locking means .                                                                                                    
                     . .) is inconsistent with the preamble and ultimately recited                                                                                                     
                                                                                          8                                                                                            





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