Appeal No. 1998-0200
Application No. 08/698,193
OPINION
The rejection for indefiniteness
The examiner has rejected Claims 2-6 and 9-12 under 35 U.S.C. § 112, second paragraph,
because “Claim 12...fails to recite all the elements necessary to constitute a ‘magnetic head’ as recited
in the preamble....” (Final Rejection, page 2.) “It is unclear how the listed elements are placed and/or
cooperate to function as a ‘magnetic head’.” (Id.) The examiner’s first assertion appears to be based
on a belief that the claims are “incomplete.” The second assertion appears to be based on a belief that
the interrelationships of the recited structure are not properly set forth. The function of claims
is (1) to point out what the invention is in such a way as to distinguish it from the prior art; and (2) to
define the scope of protection afforded by the patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577
n.5, 224 USPQ 617, 635 n.5 (Fed. Cir. 1985).
With regard to the above-noted first requirement, we have no difficulty in comparing the subject
matter of the claims with the prior art. The examiner apparently had no such difficulty, either. The
examiner made an art rejection, but did not submit that any assumptions were being made with regard
to how the claims were to be interpreted differently from their literal terms.
We now consider the above-noted second function of the claims. The legal standard for
definiteness is whether a claim reasonably apprises those of skill in the art of its scope. In re
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