Appeal No. 1999-1489
Application No. 08/691,193
The examiner finds this to be indefinite because (answer,
page 3):
On line 2, the use of the alternative “or” is
improper. If appellant wishes to claim alternatives
they must be art recognized equivalents and in Markush
form.
We will not sustain this rejection. The test for
compliance with the second paragraph of § 112 is “whether a
claim reasonably apprises those of skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994). We have no doubt that one of ordinary
skill would know precisely what the scope of claim 7 is.
We should add that use of the word “or” in a claim does not
automatically render the claim indefinite, as the examiner seems
to assume. See MPEP § 2173.05(h), part II (July
1998)(“Alternative expressions using ‘or’ are acceptable, such
as ‘wherein R is A,B,C, or D.’”)
Accordingly, rejection (1) will not be sustained.
Rejection (2)
Before considering the merits of this rejection, we note
that at pages 5 and 6 of the brief appellant argues that the
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