Appeal No. 2001-0291 Page 6
Application No. 08/772,559
recited in the claim to enable the function to be effected
(answer, p. 7). The examiner’s position in this regard is not
well taken, as there is nothing intrinsically wrong with
defining something by what it does rather than what it is. In
re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981).
As noted by the Court in In re Swinehart, 439 F.2d 210, 212
n.4, 169 USPQ 226, 228 n.4 (CCPA 1971), a claim may not be
rejected solely because of the type of language used to define
the subject matter for which patent protection is sought. So
long as appellants are claiming what they regard as their
invention and the language used is sufficiently precise and
definite to provide a clear-cut indication of the scope of the
subject matter embraced, the second paragraph of 35 U.S.C. §
112 provides no authority for rejecting a claim on the basis
of any language, functional or otherwise. See Id., 439 F.2d
at 213, 169 USPQ at 229.
We do not share the examiner’s view that it is unclear if
the phrases “an effective depth,” “an edge area,” “a section
modulus” and “a moment of inertia” recited in claims 9 and 10
reference the respective phrases previously recited in claims
1 and 2. It is readily apparent to us that these phrases
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