Appeal No. 1998-0273
Application 08/285,892
Accordingly, we reasonable inferred from this record that the examiner has indulged in hindsight
and therefore reverse this ground of rejection. See Rouffet, supra (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellants’ claimed invention has not been explained).
Turning now to the ground of rejection under § 112, second paragraph, the initial burden of
establishing a prima facie case on any ground under the second paragraph of § 112 rests with the
Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992),
citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As discussed in
In re Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground,
of presenting a prima facie case of unpatentability.”). In making out a prima facie case of non-
compliance with this statutory provision on the basis that a claim is indefinite for failing to particularly
point out and distinctly claim the subject matter which appellants regard as the invention, the examiner
must establish that when the language of the appealed claims is considered as a whole as well as in view
of the written description in the specification as it would be interpreted by one of ordinary skill in the art,
the claims in fact fail to set out and circumscribe a particular area with a reasonable degree of precision
and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In other
words, the operative standard for determining whether § 112, second paragraph, has been complied
with is "whether those skilled in the art would understand what is claimed when the claim is read in light
of the specification." See The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154,
1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994), quoting Orthokinetics Inc v. Safety Travel Chairs
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
In the present case, three range limitations in claim 14 are prefaced with the language “a
preferred,” which language also appears in the written description in the specification.4 In context, the
use of the indefinite article “a” clearly indicates that there are other “preferred” ranges. Indeed, contrary
to appellants’ argument (brief, pages 10-11), the entire phrase must be interpreted in each instance and
4 See the preliminary amendment of August 4, 1994 (Paper No. 15; paragraph bridging pages 5-6).
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