Appeal No. 1997-3090
Application 08/309,280
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 teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977), citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (1971). Furthermore, our reviewing court points out that
a claim which is of such breadth that it reads on subject
matter disclosed in the prior art is rejected under 35 U.S.C.
§ 102 rather than under 35 U.S.C. § 112, second paragraph.
See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197 (Fed.
Cir. 1983) citing In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970). "The legal standard for definiteness
is whether a claim reasonably appraises those of skill in the
art of its scope." In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994).
On page 3 of the answer, the Examiner notes that
independent claims 5 and 9 each recite "at least one member
extending from the plate." The Examiner argues that there is
5
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