Appeal No. 2001-0206
Application 08/959,964
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 determining whether
this standard is met, 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. Thus,
depending on the facts involved, claims that refer to a
standard that is variable may or may not be definite.
Compare, for example, Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986)
and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Int.
1989)). The disclosure in the instant application indicates
that the inventive essence of the appellant’s bicycle seat
lies in its relationship to certain parts of a user’s anatomy,
with clear distinctions being drawn between such relationship
and those embodied by prior art bicycle seats. Thus, the
appellant’s claims would appear to be as accurate as the
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