Appeal No. 1996-2972 Page 4
Application No. 07/928,784
examiner concerning the above noted rejections. For the
reasons which follow, we cannot sustain the examiner's stated
§ 112, second paragraph, rejection as applied to claims 1, 6
and 16 and the examiner's § 103 rejection as expressed in the
answer. However, we shall summarily sustain the examiner's
§112, second paragraph rejection as it separately pertains to
claims 3-5, 13-15, and 17. An explanation follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
In rejecting the appealed claims under 35 U.S.C. § 112,
second paragraph, the examiner (answer, page 3) urges that the
language of the fourth paragraph of claim 1 is indefinite "in
that the use of the term 'may' renders the claims unclear...."
At page 7 of the answer, the examiner further explains that
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