Appeal No. 1996-2718
Application No. 08/221,207
indefinite because it is not clear how the step of "heating" would "form" a stream instead of
just a molten bath.1
We reverse this rejection under 35 U.S.C. ' 112, second paragraph. Claim 1 involves a
melted superconducting material which is further heated to form a "stream", i.e., a material which can be
dropped into a barrel. Regardless of whether the melted superconducting material is flowing or
stationary at any particular moment, it still is a "stream" because it is capable of being dropped into a
barrel. The specification further indicates at p. 7, lines 14-18, that the melted superconducting material
is superheated to reduce its viscosity so that it flows freely as a continuous stream. In the context of
claim 1 and in view of the present specification, therefore, the examiner has not sustained his burden of
showing indefiniteness. The claim language is not read in a vacuum, but rather, the test for definiteness
under 35 U.S.C. ' 112, second paragraph, is whether the claim language circumscribes the invention
with reasonable precision and particularity for one of ordinary skill in view of the disclosure and the
prior art. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Rejection under 35 U.S.C. ' 112, first paragraph
The examiner rejects claim 4 under 35 U.S.C. ' 112, first paragraph, because the
specification as originally filed does not provide support for the invention as now claimed.5 By
amendment on November 14, 1994, claim 4 was changed from the formula "Bi2Sr2Ca1Cu2Ox" to -
- Bi2Sr2Ca1Cu2O8 --. The examiner argues that the -- O8 -- in the formula is found in the
background portion of the specification rather than the description portion, and thus
5 Examiner's Answer, filed February 4, 1996, pp. 3 and 4.
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