Appeal No. 1998-1832
Application No. 08/434,331
subject matter which appellants regard as the invention.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the aforementioned rejections are not
well founded. Accordingly, we reverse the rejections.
The Rejection Under 35 U.S.C. § 112
“The legal standard for definiteness [under the second paragraph of 35 U.S.C.
§ 112] is whether a claim reasonably apprises those of [ordinary] skill in the art of its
scope. [Citations omitted.]” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). The inquiry is to determine whether the claim sets out
and circumscribes a particular area with a reasonable degree of precision and particularity.
The definiteness of the language employed in a claim must be analyzed not in a vacuum,
but in light of the teachings of the particular application. In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that the claimed subject matter directed to the phrase,
“a second recovery installation,” is vague and indefinite. The examiner states that, “[i]t
is not clear what components of a recovery installation are covered by this term.” See
Answer, page 6. We determine, however, that the description in the specification at
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