Appeal No. 1998-0607 Page 4
Application No. 08/506,857
Rejection (1)
With respect to claim 1, the examiner's position is that the language "at least one rear
view mirror carried on said plurality of assembled modules" (emphasis ours) is indefinite. The
examiner contends that the claims should be limited to recite the rear view mirror mounted on
the wiping means modules, as described in the specification. Further, according to the
examiner, it is not known if the appellants are claiming that there is a rear view mirror on each
of the modules. With particular regard to claim 4, the examiner points out that "the rear view"
should be "the rear view mirror."
The purpose of the second paragraph of 35 U.S.C. § 112 is to provide those who
would endeavor, in future enterprises, to approach the area circumscribed by the claims of a
patent, with adequate notice demanded by due process of law, so that they may more readily
and accurately determine the boundaries of protection involved and evaluate the possibility of
infringement and dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). To that end, the legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361,
31 USPQ2d 1754, 1759 (Fed. Cir. 1994). Moreover, in order to satisfy the second paragraph
of 35 U.S.C. § 112, a claim must accurately define the invention in the technical sense.
See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-93 (CCPA 1973).
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