Appeal No. 1998-2847 Page 5
Application No. 08/521,873
We will not sustain the rejection of claims 1, 2, 12, 14
to 16, 27, 29, 38 and 40 to 42 under 35 U.S.C. § 112, second
paragraph.
The examiner determined (final rejection, p. 2) that the
claims under appeal were indefinite because the preamble of
claims 1 and 27 positively recites only the add-on board but
the body of claims 1 and 27 also positively recites "the
existing game board." In addition, the examiner determined
(final rejection, p. 2) that the phrase "substantially similar
to the game board described in Figure 1 of the U.S. Pat. No.
2,026,082" recited in claim 27 was vague and indefinite since
"[a]pplicant is not permitted to reference his own drawing
[sic, a drawing in an issued patent] to define the invention
in a claim."
Claims 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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