Appeal No. 1998-0078
Application No. 08/478,814
Rejection Under 35 U.S.C. § 112, Second Paragraph
The Examiner has rejected claims 26 and 27 as unpatentable under 35 U.S.C. § 112,
second paragraph as indefinite. According to the Examiner, claim 26 “recites process
steps, not an apparatus capable of performing those process steps and is therefore
confusing since the claim is directed towards an apparatus.” (Examiner’s Answer, page 3).
The Examiner bears the initial burden of presenting a prima facie case of
unpatentability, whether the rejection is based on prior art or any other ground. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “The legal
standard for definiteness [under § 112, second paragraph] is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). 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 the application disclosure as it would be interpreted by one of ordinary skill in the
art. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
We determine the written description of the specification is sufficient to inform
one skilled in the art of the meaning of the claim language rejected by the Examiner.
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