Appeal No. 1998-2257
Application 08/692,310
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner argues that “[c]laim 32 is vague and
indefinite because the expression ‘as shown in Figures 36 to
42’ is indefinite because it does not set forth specially
[sic, specifically] which figure limits which alloy and does
not set forth specifically what characteristics of which
alloys are being shown, in fact Fig(C) shows characteristics
of ‘Au only’” (answer, page 4).2 The examiner, however, does
not explain why the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of
2 Citations herein are to the examiner’s answer mailed on
March 11, 1998 (according to the file wrapper), paper no. 33.
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