Appeal No. 2001-0308 Page 4
Application No. 09/188,701
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
The basis of the examiner’s rejection of claim 9 under the
second paragraph of 35 U.S.C. § 112 is that “the side of the
wire” lacks antecedent basis. Appellant does not contest that
“the side of the wire” lacks express antecedent basis but urges
that a wire, which has a clear definition, inherently has a side
and that it is thus unnecessary to provide antecedent basis
(brief, page 8).
We agree with the appellant. The failure to provide
explicit antecedent basis for terms does not always render a
claim indefinite; if the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not
indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1146 (Bd. Pat.
App. & Inter. 1992). In this instance, while the term
“diameter,” as used in claim 6 from which claim 9 depends, might
have been preferable to the term “side” used in claim 9, a person
of ordinary skill in the art would have understood the “side” of
the wire to be the surface of the wire extending from the top to
the bottom. Accordingly, it would have been apparent to such a
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