Appeal No. 1996-3597 Page 4
Application No. 08/050,825
founded. Accordingly, these rejections will be reversed for
substantially the reasons set forth by appellant in the brief.
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 appellant’s 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 term predetermined is unacceptable" and makes
reference to the mold, article, polymer composition and the
"flexible and liquid impervious layer" (claim 1) as not being
identified. At page 5 of the answer, the examiner further2
attempts to explain that "... the term 'predetermined' is
unacceptable because it does not further define the claim" and
2We note that the examiner's additional references to
claim 15 and the "resulting article" language of claims 2-5
and 10-12 (answer, page 3) are not germane since claim 15 has
been canceled and claims 2-5 and 10-12 have been amended to
remove any reference to a "resulting article."
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