Appeal No. 1997-0958
Application 08/300,669
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).
The examiner argues that the phrase “dry spinning or wet
spinning” is indefinite as to what is appellants’ invention
(answer, page 6). In what is apparently the examiner’s
explanation of the rejection, the examiner argues that “[t]he
primary references to Hanzel et al, Anderson et al, Ejima et
al, teach the well known process of spinning and heating to
remove solvent, finishing and winding of polydimethylsiloxane
to produce spandex fibers”. See id. It is not clear from
this argument why the examiner considers the claims, as they
would have been interpreted by one of ordinary skill in the
art in light of appellants’ specification and the prior art,
to fail to set out and circumscribe a particular area with a
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