Appeal No. 1998-2552
Application No. 08/292,977
Appellant submits that the specification does not state
that the preform is inserted into the ring, nor that the ring is
slid over the preform (Brief, page 9). Appellant argues that
either method would have been clear to one of ordinary skill in
the art (id.).
It is well settled that the legal standard for definiteness
is whether one of ordinary skill in the art would have been
appraised of the scope of the claims. See In re Warmerdam, 33
F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The
examiner has not shown, by convincing reasoning or evidence,
that one of ordinary skill in the art would not have been
appraised of the scope of the claim language in question. 4
Accordingly, since the examiner has not met the initial burden
of establishing indefiniteness of the claimed language, we
cannot sustain the rejection of claim 35 under 35 U.S.C. § 112,
second paragraph.
For the foregoing reasons and those stated in the
Brief and Reply Brief, we reverse the examiner’s rejection of
4We note that the examiner has not made any rejection
based on the written description requirement of the first
paragraph of 35 U.S.C. § 112.
5
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