Appeal No. 1997-2977
Application No. 08/431,688
the record suggests that the fluoropolymer topcoat of claim 1
is necessarily or inherently resistant to shrinkage and
flaking. To the contrary, the specification merely states
that the fluoropolymer topcoat “should be resistant to
shrinkage and flaking” (underlining added; page 15, lines 10-
14). We therefore concur with the appellants that claim 7
complies with the fourth paragraph of 35 U.S.C. § 112.
We next address the examiner’s rejection of claims 1
through 14 and 22 through 26 under 35 U.S.C. § 112, second
paragraph. The second paragraph of 35 U.S.C. § 112 (1999)
states:
The specification shall conclude with one or
more claims particularly pointing out and
distinctly claiming the subject matter which the
applicant regards as his invention.
The “distinctly claiming” requirement means that the claims
must have a clear and definite meaning when construed in light
of the complete patent specification. Standard Oil Co. v.
American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296
(Fed. Cir. 1985). Thus, section 112 ensures definiteness of
claim language. In re Zletz, 893 F.2d 319, 322, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). The test for definiteness is
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007