Appeal No. 1997-3237
Application 08/266,081
motor at each operating point. The Examiner on page 4 of the
answer further argues that it is not clear whether the
regeneration mode continues from the first operating point to
the second point. The Examiner states that the step of
“providing a battery,” as recited in claim 6, is not only a
method step to define a circuit but is also indefinite since
it is not clear whether the battery is the source or in
addition to the source.
Analysis of claims under 35 U.S.C. § 112, second
paragraph, should begin with the determination of whether
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 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
6
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