Appeal No. 2001-0250 Page 7
Application No. 08/283,074
I. Indefiniteness Rejection of Claims 17, 42-46,
74, 77, 78, 80, and 91
We begin by noting the following principles. “The test
for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the
specification. If the claim read in light of the
specification reasonably apprise[s] those skilled in the art
of the scope of the invention, Section 112 demands no more.”
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27
USPQ2d 1123, 1126 (Fed. Cir. 1993) (internal citations
omitted). Furthermore, a claim should not be denied “solely
because of the type of language used to define the subject
matter for which patent protection is sought.” In re
Swinehart, 439 F.2d 210, 212 n.4, 169 USPQ 226, 228 n.4 (CCPA
1971). With these principles in mind, we consider the
examiner's rejections and the appellants' arguments.
Regarding claim 17, the examiner alleges, "[c]laim 17
sets forth a result 'is produced...' instead of an active
method step of 'producing' ...." (Examiner's Answer at 3)
The appellants argue, "claim 17 is definite and clearly and
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