Appeal No. 1998-0631
Application 07/957,990
rendering the claim(s) vague and indefinite
within the meaning of 35 U.S.C. 112, second
paragraph.
In my view this procedure is improper. A decision on
whether a claim is "vague and indefinite" under § 112, ¶ 2,
requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in
light of the specification. Orthokinetics Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081,
1088 (Fed. Cir. 1986); Seattle Box Co. v. Industrial Crating
& Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed.
Cir. 1984); In re Morasi, 710 F.2d 799, 803, 218 USPQ 289,
292 (Fed. Cir. 1983). As with all rejections, the burden of
proof in rejecting claims rests with the examiner. In re
Oeticker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Thus, the examiner has the burden of showing
that the hypothetical person of ordinary skill in the art
would not understand the scope of the claimed subject
matter. MPEP § 821 appears to side step this burden by
creating a per se rule of indefiniteness whenever the
examiner and applicant disagree as to whether claims are
readable on the elected species. The fact that the examiner
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