Appeal No. 1999-1236
Application 07/571,782
premature to consider whether the phrase is described by the original disclosure and/or
serves to distinguish the claims from the prior art. Accordingly, we vacate the examiner’s
rejections and institute a new ground of rejection under the provisions of 37 CFR §
1.196(b). In so doing, we take no position on the merits of these rejections. If claims in
compliance with 35 U.S.C. § 112, second paragraph, are presented, both appellant and
examiner should revisit these issues in light of the newly amended claims.
New Ground of Rejection under 37 CFR § 1.196(b)
Claims 1, 3 through 5 and 9 through 18 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
According to In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989), “An essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In addition, “the
definiteness of the language employed 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.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971).
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