Appeal No. 1997-1594
Application No. 08/247,090
Any analysis of the claims for compliance with 35 U.S.C.
§ 112 should start with the second paragraph, then proceed
with the first paragraph. In re Angstadt, 537 F.2d 498, 501,
190 USPQ 214, 217 (CCPA 1976), In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238, (CCPA 1971).
The legal standard for definiteness under the second
paragraph of 35 U.S.C. § 112 is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The first inquiry is to determine whether the
claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
The examiner lists two terms which he considers as being
indefinite. These terms are CVD and PVD. Subsequently,
however, the examiner acknowledged that CVD is defined in the
specification and withdrew the rejection with respect to that
term. See Answer, page 10. As to the term PVD, Appendix C
clearly discloses that PVD is similarly well known. See
Appendix C, page 3. Accordingly, we will not sustain the
examiner’s rejection of claim under the second paragraph of 35
U.S.C. § 112. We turn next to the examiner’s rejection
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