Appeal No. 1997-1389
Application 08/642,811
Turning first to the rejection of claims 1 through 5
under the second paragraph of 35 U.S.C. § 112, it is to be
noted that to comply with the requirements of the cited
paragraph, a claim must set out and circumscribe a particular
area with a reasonable degree of precision and particularity
when read in light of the disclosure and the teachings of the
prior art as it would be by the artisan. Note In re Johnson,
558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977); In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
We have reviewed and considered the examiner’s reasons in
support of the rejection, but are not convinced that the cited
claims fail to comply with the second paragraph of 35 U.S.C. §
112. At the outset, we note that the breadth of the claims is
not equated with indefiniteness of the claims. See In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971). It
is perfectly permissible for appellant to claim his invention
in terms as broad as his application disclosure will support.
The examiner's concerns with respect to the next phase of
a drive sequence set forth at the end of claim 1 on appeal
relate to a more restrictive view of the second paragraph of
3
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