Ex parte IWASAWA et al. - Page 5




          Appeal No. 1997-1212                                                        
          Application 08/017,839                                                      

          claims do not stand or fall together, 37 CFR  1.192(c)(7)                  
          (1995), the Argument section of the brief does separately                   
          argue several claims in addition to claim 1, in particular,                 
          claims 5 and 10.  The Examiner should have addressed these                  
          claims separately.  Looking back over the prosecution                       
          history, we see that the claims have never been treated                     
          individually under 35 U.S.C.  103.  Rather than remanding                  
          the case, we address the claims on the merits based on the                  
          references.                                                                 

          35 U.S.C.  112, second paragraph                                           
               The second paragraph of 35 U.S.C.  112 requires that a                
          claim set out and circumscribe a particular area with a                     
          reasonable degree of precision and particularity when read                  
          in light of the disclosure as it would be by the person of                  
          ordinary skill in the art.  See Orthokinetics, Inc. v.                      
          Safety Travel Chairs, Inc., 806 F.2d 1565, 1576,                            
          1 USPQ2d 1081, 1088 (Fed. Cir. 1986).  Claim breadth should                 
          not be confused with indefiniteness.  See In re Miller,                     
          441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).                           
               One source of the Examiner's problems is failing to                    
          read the claims in light of the disclosure.  The Examiner                   
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