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The Rejections under Section 112
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 inquiry is to determine whether the claim sets out and circumscribes
a particular area with a reasonable degree of precision and particularity. The
definiteness of the language employed in a claim must be analyzed not in a vacuum, but
in light of the teachings of the particular application. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Accordingly, it is incumbent upon the examiner, in the first instance, to
demonstrate that one of ordinary skill in the art would not understand the scope of
the claim when the claim language is read in light of the specification and the state of
the prior art. In the present case, the examiner has not satisfied this burden. It is the
examiner’s position that the phrase, “maintaining the saturation substantially
throughout” is indefinite as use of this phrase does not clearly set forth the limits
of the claims. See Answer, page 4. While the examiner noted in the Answer that
appellant’s principal Brief did not advance an argument against the section 112
rejections, Answer, page 7, appellant has responded by submitting an argument at
pages 1 and 2 of the Reply Brief. It is appellants’ position that support for the
criticized language can be found at pages 16 and 17 of the present specification.
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