Appeal No. 2000-0156
Application 08/531,023
the rejection of the claims under the first paragraph of 35
U.S.C. § 112 must be reversed. Note the consistency in Enzo
Biochem., Inc. v. Calgene, Inc., 188 F.3d 1362, 1376, 52 USPQ2d
1129, 1139-40 (Fed. Cir. 1999) with the earlier noted Genentech
case.
The examiner’s rejection of the claims on appeal under the
second paragraph of 35 U.S.C. § 112 is also reversed. The use of
the term “transparent” to describe in claim 6 quartz glass is not
vague and indefinite to the artisan and the scope of the meaning
of this term is reasonably ascertainable by the artisan.
As to this rejection of the claims on appeal under the
second paragraph of 35 U.S.C. § 112, it is to be noted that to
comply with the requirements of the cited paragraph, a claim must
set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the
disclosure and the teachings of the prior art as it would be by
the artisan. Note
In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17
(CCPA 1977); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971).
As pointed out by appellant at page 10 of the brief, the
term “transparent” is used to describe quartz glass and is not
used alone. As such, it clearly describes a known physical
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