Appeal No. 1998-2914
Application 08/510,971
connections between elements, and omitting necessary
antecedent structure to support the various
recitations of function. The claims are indefinite
as to the structural arrangement of parts so as to
enable a definite and meaningful system. [Answer,
page 5.]
We will not support the examiner's position. The
examiner's approach as to whether the claims on appeal satisfy
the second paragraph of § 112 appears to have been to study
the disclosure, and then formulate a conclusion as to what
structural elements should be claimed to support the recited
functions. Such an approach is improper. See In re
Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA
1970). There is only one basic ground for rejecting a claim
under the second paragraph of § 112, namely, the language
employed does not reasonably apprise those
of skill in the art of its scope. See, e.g., In re Warmerdam,
33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994) and
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). While the claims are perhaps broader than the examiner
would like, breadth alone is not to be equated with
indefiniteness.
In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194
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