Appeal No. 1999-0710
Application No. 08/716,875
cause changes in the results of the various tests
[used to determine the claimed transfer layer
characteristics] . . . it is an absolute certainty[2]
that at least one article will fall within the scope
of the claims given a first set of conditions and
outside the scope of the claims given a second set
of conditions. [Answer, page 4.]
Thus, the examiner concludes that claims 7, 8, 18 and 19 are
indefinite.3
There is no requirement that patent claims define the
invention with mathematical precision. Rather, if the claims,
when read in light of the specification, reasonably apprise
those skilled in the art of both the utilization and the scope
of the invention, and if the language is as precise as the
subject matter permits, the statute demands no more. Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d
1123, 1126 (Fed. Cir. 1993); Hybritech, Inc. v. Monoclonal
2Appellants’ specification sets forth on pages 7-8 a
detailed explanation of how the ordinarily skilled artisan
would go about determining the “mean free path” of a layer of
material, and on page 6 a detailed explanation of how the
ordinarily skilled artisan would go about determining the
“bovine blood absorbency rate” of a layer of material.
3We note in passing that appealed claims 13 and 20 also
define the invention in terms of the same “mean free path” and
“bovine blood absorbency rate” characteristics found by the
examiner to be indefinite, yet these claims have not been
included in this ground of rejection.
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007