Appeal No. 1999-2725 Page 3
Application No. 08/763,087
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art reference, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection 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 always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
In this rejection, the examiner raises three issues. The first is that it is unclear what
type of method is being claimed in that the steps include “a method of making a tool by
applying indicia, a method of determining size by applying a tool to a workpiece, and a
method of ‘collating’ or sorting by size of different tools” (Answer, page 3). Independent
claims 1 and 11 clearly state that they are directed to “[a] method for [of] collating . . .
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