Appeal No. 1997-2455
Application 08/318,235
Appellants have argued two groups of claims.
Accordingly, for the rejection under 35 U.S.C. § 112, second
paragraph, we will consider claim 55 as group 1 and claims 77,
78 and 83 as group 2.
We first consider whether claim 55 is properly rejected
under 35 U.S.C. § 112, second paragraph. On page 3 of the
Examiner’s answer (answer), the Examiner states that the claim
is confusing as it is an apparatus claim which depends upon a
method claim. Appellants have not argued that the rejection
is improper but rather state, on page 11 of the brief, that
drafting claim 55 as an apparatus claim was a mistake. Since
Appellants have made no arguments concerning the rejection of
claim 55, we affirm the Examiner’s rejection of claim 55.
We next consider the rejection of claims 77, 78 and 83
under 35 U.S.C. § 112, second paragraph. Analysis of 35
U.S.C.
§ 112, second paragraph, should begin with the determination
of whether these 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
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