Appeal No. 1998-1440 Page 4
Application No. 08/368,452
err in rejecting claim 14 as indefinite. Accordingly, we
affirm-in-part. Our opinion addresses the following issues:
• indefiniteness rejection of claims 5-9 and 11-16
• obviousness rejection of claims 4-16.
Indefiniteness Rejection of Claims 5-9 and 11-16
We begin by noting the following principles from Miles
Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d
1123, 1126 (Fed. Cir. 1993).
The test for definiteness is whether one skilled
in the art would understand the bounds of the claim
when read in light of the specification.
Orthokinetics, 806 F.2d at 1576. If the claims read
in light of the specification reasonably apprise
those skilled in the art of the scope of the
invention, Section 112 demands no more. Hybritech,
802 F.2d at 1385. The degree of precision necessary
for adequate claims is a function of the nature of
the subject matter. Id.
With these principles in mind, we address the examiner's three
reasons for the rejection under 35 U.S.C. § 112, ¶ 2.
First, the examiner rejects claims 5-9 and 11-16 for the
following reason.
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