Appeal No. 1998-0631
Application 07/957,990
and the applicant, neither of whom are persons of ordinary
skill in the art, disagree does not address the fundamental
question of why the hypothetical person of ordinary skill in
the art would not understand the scope of the claims when
the claims are read in light of the specification. While,
the disagreement may indicate a possible problem, the
disagreement standing alone is insufficient to satisfy the
examiner’s burden. To satisfy the burden the examiner must
identify the specific claim language which renders the
claims indefinite and point to evidence in the record or
provide an explanation as to why one skilled in the art
would not understand the scope of the claims. Since the
examiner has failed to meet this burden I would reverse on
this basis alone, and it is unnecessary "to review whether
the rejected claims correspond to the elected species
represented by figure 4 . . . ." Such analysis, under the
facts of this case, has not been shown to be relevant to the
indefiniteness issue.
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