Appeal No. 1998-2287
Application No. 08/211,157
rejections under 35 U.S.C. §§ 102(b) and 103. In re Steele,
305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962).
Pursuant to 37 CFR § 1.196(b), we enter the following new
ground of rejection:
Claims 6, 8, 10 through 12, 16, 18, 19, and 21 through 26
are rejected under the second paragraph of 35 U.S.C. § 112 for
failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 (1999) states:
The specification shall conclude with one or
more claims particularly pointing out and
distinctly claiming the subject matter which the
applicant regards as his invention.
The “distinctly claiming” requirement means that the claims
must have a clear and definite meaning when construed in light
of the complete specification. Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296 (Fed. Cir.
1985). Thus, section 112 ensures definiteness of claim
language. Zletz, 893 F.2d at 322, 13 USPQ2d at 1322.
In this regard, the purpose of a patent claim is to
define the scope of protection and hence what the claim
8
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