Appeal No. 2000-0105
Application No. 08/573,247
appropriately, running the risk that they may fail to correct
all of these problems. Likewise, it would be unfair to
appellants for this Board to affirm a rejection under 35
U.S.C. § 112, second paragraph, based on a reason which the
examiner did not specify in a prior Office action. We will
therefore only consider the specific reasons set forth in the
examiner’s answer.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA
1975), defines the question of compliance with the second
paragraph of 35 U.S.C. § 112 as:
whether the claim language, when read by a person of
ordinary skill in the art in light of the
specification, describes the subject matter with
sufficient precision that the bounds of the claimed
subject matter are distinct.
See also In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994)(“The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art
of its scope”). Applying these criterion to the first reason
specified by the examiner, i.e., claiming a characteristic
variable selected from a group and then claiming a specific
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