Appeal No. 1998-2918
Application No. 08/508,874
Finally, we note that, at the time of rejection, the examiner worked without benefit
of a complete English translation of the foreign language document. An English
translation is now present in the file wrapper.
New Ground of Rejection -- 37 CFR 1.196(b)
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 1.196(b): Claims 1-16 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5
(Fed. Cir. 1985). The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). The inquiry 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. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). The definiteness of the language employed must be analyzed -- not in a
vacuum, but 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. Id.
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