Appeal No. 1999-0220 Page 10
Application No. 08/540,323
From these diverse disclosures, we conclude that one of
ordinary skill in the art as of the date of the appellant's
application would have taken the appellant's disclosure, as a
whole, to mean that the braking surfaces cause elastic
deformation (i.e, no permanent damage) of the ram but not
permanent deformation (i.e, permanent damage) of the ram.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 4, 6 to 12, 21 and 27 to 30
under 35 U.S.C. § 112, first paragraph, is reversed.
The indefiniteness rejection
We sustain the rejection of claims 1 to 4, 6 to 12, 21
and 27 to 30 under 35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
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