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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