Appeal No. 1998-2643
Application 08/549,349
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). The definiteness of the language employed
in the claims must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and the application
disclosure as it would be interpreted by one of ordinary skill
in the art. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ
214, 217 (CCPA 1976).
The examiner has not presented any reasoning or evidence
why the term “selected” is vague and indefinite and why one of
ordinary skill in the art would not be apprised of the scope
of a claim that contains this term. Therefore the examiner
has not met the initial burden of presenting a prima facie
case of unpatentability. Furthermore, the examiner has not
replied to any of appellants’ arguments against this rejection
(Brief, pages 9-13; Reply Brief, page 5). Accordingly, the
rejection of claims 33-35 and 37 under 35 U.S.C. § 112 is
reversed.
B. The Rejections under 35 U.S.C. § 103
The examiner finds that Haluska teaches a method of
forming a ceramic coating on a substrate such as an electronic
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