Appeal No. 1997-1354
Application No. 08/432,610
35 U.S.C. § 112, second paragraph, rejection since it is
unsupported by the Examiner’s reasons.
On the outset, we must initially ascertain the scope of
Appellant’s claims 1 through 12. Analysis of 35 U.S.C. § 112,
second paragraph, should begin with the determination of
whether claims set out and circumscribe the particular area
with a reasonable degree of precision and particularity; it is
here where definiteness of the language must be analyzed, not
in a vacuum, but always in light of teachings of the
disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008,
1016, 194 USPQ 187, 194 (CCPA 1977). As discussed infra in
the new ground of rejection of claims 1 through 12, we
conclude that the claims fail to set forth the invention with
a reasonable degree of precision and particularity as required
under 35 U.S.C. § 112, second paragraph. As a result, we
cannot rule on whether the claims are unpatentable under 35
U.S.C. § 103 over the references of record. A prior art
rejection cannot be sustained if what is required is
speculation and assumptions as to the scope of the claims. In
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007