Appeal No. 1997-4194
Application No. 08/357,435
OPINION
We have carefully considered all of the arguments advanced by appellant and
the examiner and agree with the appellants that the aforementioned rejections under
35 U.S.C. § 112 and the rejection of claims 1 through 19 under 35 U.S.C.
§ 102(b), and 35 U.S.C. § 103 are not well founded. Accordingly, we will not
sustain these rejections. However, we will sustain the rejection of claims 20
through 24 under both sections 102(b) and 103.
The Rejection under Section 112 -- Indefiniteness
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).
It is the examiner’s position that the claimed subject matter is indefinite in
several respects. With respect to claims 1 and 20 the examiner states that the
phrase, “optional alloy elements” is indefinite in that the optional elements are not
recited in the claims. See Answer, page 3. As to claim 11, the examiner submits that
the claim is indefinite because the AlCuFe alloy cannot be identified by the properties.
Id.
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