Appeal No. 1998-2134
Application No. 08/585,217
Director of the U.S. Patent and Trademark Office and not
appeal to the Board.
We reverse the examiner’s rejection of claim 7 under 35
U.S.C. § 112, second paragraph as being indefinite for the
reasons articulated by appellant in his Brief and Reply Brief.
As the court stated in In re Moore, 439 F.2d 1232, 1235, 169
USPQ 236, 238 (CCPA 1971), the determination of whether the
claims of an application satisfy the requirements of the
second paragraph of Section 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
It is here where the definiteness of language
employed must be analyzed -- not in a vacuum, but
always in light of the teachings of the prior art
and of the particular application disclosure as it
would be interpreted by one possessing the ordinary
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Here, the examiner criticizes the use of the terminology “M ”
p
but has not supplied any basis to doubt the evidence and
argument submitted by appellant in his Reply Brief .5
We affirm the examiner’s decision rejecting all of the
The examiner has approved entry of appellant’s Reply Brief containing5
new arguments and supporting evidence.
5
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