Appeal No. 1998-1711 Page 4
Application No. 08/506,387
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art references, and to the respective
positions articulated by the appellants and the examiner. As a consequence of our review, we
make the determinations which follow.
The indefiniteness rejection
The examiner has rejected claims 1-10 as being indefinite on the basis that the recitation
"wherein one of said modules includes at least one further liquid reservoir" is confusing, since
there is no disclosure that the wiping means module can include the further liquid reservoir and
it thus appears that only certain reservoirs can accommodate the further reservoir.
Additionally, the examiner questions whether the modules, or the whole assembly, includes a
further reservoir (answer, page 5).
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
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