Appeal No. 1997-0921
Application 08/038,577
Without belaboring the issue, it is apparent from our earlier discussion that there is
a relatively clear correspondence of the terminology and functions associated therewith in
each of the claims on appeal to that which has been disclosed in the specification as filed.
Therefore, it is relatively straightforward to conclude that the appellants are particularly
pointing out and distinctly claiming what they have regarded as their invention within the
second paragraph of 35 U.S.C. § 112. As such, the claims are not indefinite. Additionally,
the scope associated with each of the features recited is consistent with the scope of
disclosure. As just noted in the preceding paragraph, it is improper to associate or equate
breadth of the claims with indefiniteness. We therefore do not agree with the examiner's
assertion at pages 5 and 6 of the Answer that the claims require such a large amount of
speculation as to what is being claimed to justify the examiner's conclusion that no art
rejection has therefore been applied in accordance with In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). Therefore, we must reverse the rejection of claims 1
through 9 under the second paragraph of 35 U.S.C. § 112.
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