Page 6
Appeal No. 1999-1814
Application No. 08/688,108
The examiner has rejected claims 13 and 14 on the basis that they fail to include "the critical5
limitation of 'carpal tunnel'" and that, absent this limitation, the specification and claims fail to provide the
area of surgery at which the method is to be performed (answer,
page 4).
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). As long as this requirement is met, the claims are not
indefinite. Breadth is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 693, 169
USPQ 597, 600 (CCPA 1971).
For the reasons discussed above with regard to the examiner's rejection of claims 13-19 under
the first paragraph of 35 U.S.C. § 112, we do not consider "carpal tunnel" to be a critical limitation of
the claims. While we appreciate that claims 13 and 14 are broad in that they are not limited to any
particular area of the body or to any particular type of patient, the claims set out and circumscribe the
invention with sufficient precision and particularity that its metes and bounds can be easily ascertained
by one of ordinary skill in the art. We do not agree with the examiner that the scope of the claims must
be limited to a particular area of the body to comply with the second paragraph of 35 U.S.C. § 112.
5While the examiner has not included claims 16 and 18, we note, for the record, that these claims, like
claims 13 and 14, are also not limited to carpal tunnel surgery.
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