Appeal No. 1996-3547 Page 5
Application No. 08/089,854
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 claims 71-106 under 35 U.S.C. § 112, second
paragraph, the examiner (answer, page 3) urges that "it is
unclear how the intended use terminology is intended to modify
the claim language" so as to further limit the invention. At
page 7 of the answer, the examiner further explains that "it
would be difficult to determine the scope of the claims because
the terminology is based on a use rather than on actual
structure." While we recognize that the variously recited
functional potential use limitations of these claims do not
circumscribe a narrowly defined shape for the prosthetic device,
such breadth does not equate with indefiniteness. See In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). From
our reading of appellants' specification, including the claims,
and the relevant prior art, it is clear that the prosthetic
device shape called for in claims 71-106 is reasonably definite
albeit broad in encompassing any suitable shape that would be
useful for the suggested applications. Accordingly, we shall not
sustain the examiner*s rejection of claims 71-106 under 35
U.S.C. § 112, second paragraph.
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