Ex parte HWANG et al. - Page 8




                 Appeal No. 1998-1096                                                                                                                   
                 Application No. 08/415,399                                                                                                             


                 1970).  Here, the language “reduce incident thermal neutrons                                                                           
                 by a factor of about 2 or more” limits the structure of the                                                                            
                 thermal neutron absorbing layer since, as disclosed in                                                                                 
                 Appellants’ specification, the amount of thermal neutrons                                                                              
                 incident on the absorbing layer is a function of layer                                                                                 
                 thickness,  and the thermal absorption quality of the layer                                                                            
                 material.  Since the Examiner has chosen to ignore the claimed                                                                         
                 particular reduction factor, no showing on the record exists                                                                           
                 as to how Cannella’s shielding layer, which is used in a                                                                               
                 scanning mechanism and is designed to be transparent, would                                                                            
                 meet the requirements of  claim 5.                                                                                                     
                          In view of the above discussion, it is our opinion that,                                                                      
                 since all of the claim limitations are not present in the                                                                              
                 disclosure of Cannella, the Examiner’s 35 U.S.C.  102(b)                                                                              
                 rejection of independent claim 5, as well as claim 6 dependent                                                                         
                 thereon, can not be sustained.2                                                                                                        

                          2In the “Response to arguments” portion at page 4 of the                                                                      
                 Answer, the Examiner asserts the indefiniteness of the claim                                                                           
                 language “ . . . of about 2 or more.”  Since no rejection has                                                                          
                 been made of record by the Examiner, we decline to rule on the                                                                         
                 merits of the Examiner’s contention.  We do note, however,                                                                             
                 that the breadth of a term should not be equated with                                                                                  
                 indefiniteness.  In re Miller, 441 F.2d 689, 693, 169 USPQ                                                                             
                 597, 600 (CCPA 1971).                                                                                                                  
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