Claims 8 through 16 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim the subject
matter which applicants regard as the invention.
Claims 8 through 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Edelman, Weldy or Miller.
OPINION
We have carefully considered all of the arguments advanced by appellants and the
examiner and agree with the appellants that the aforementioned rejections under 35
U.S.C. § 103 and 35 U.S.C. § 112 are not well founded. Accordingly, we will not
sustain either of the rejections.
The Rejection under Section 112 -- Indefiniteness
The legal standard for definiteness under the second paragraph of 35 U.S.C. §
112 is whether a claim reasonably apprises those of ordinary skill in the art of its
scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). The inquiry is to determine whether the claim sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. The definiteness of the language employed in a claim must be analyzed
not in a vacuum, but in light of the teachings of the particular application. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that, “it is not clear as to how the filaments can be in
contact with each other, yet be separated,” as required by the claimed subject matter.
See Answer, page 3. Hence, the claims are indefinite.
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