Appeal No. 2001-0206
Application 08/959,964
1 through 7, 10, 12, 18, 20, 22, 24, 25, 32 and 33 to be
indefinite because they include numerous functional or
operational limitations which define a bicycle seat relative
to the anatomy of the user which, in the examiner’s view,
constitutes a non-claimed variable standard.
The examiner’s position here is not well founded.
There is nothing intrinsically wrong with using
functional (or operational) language in a claim to define
something by what it does rather than by what it is. In re
Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In
re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA
1971). Thus, the mere fact that the appellant’s claims
contain functional or operational language which defines the
bicycle seat in terms of the anatomy of a user does not render
the claims indefinite.
The examiner’s observation that the anatomy of a user, at
least to the extent recited in the appealed claims, may vary
from person to person is well taken and is acknowledged by the
appellant (see, for example, page 9 in the specification). As
for the definiteness issue raised by this circumstance, the
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