Appeal No. 98-3017 7
Application No. 08/437,986
Rejection Pursuant to 37 CFR § 1.196(b)
Under the provisions of 37 § CFR 1.196(b), we enter the following new ground
of rejection. Claim 12 is 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
appellants regards as the invention.
"The legal standard for definiteness [under the second paragraph of 35 U.S.C.
§ 112] is whether a claim reasonably apprises those of ordinary 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 to determine whether the claim sets out and circumscribes a
particular area with a reasonable degree of precision and particularity. The definiteness
of the language employed in a claim must be analyzed not in a vacuum, but in light of the
teachings of the particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
We determine that the scope of the claimed subject matter cannot be ascertained
in light of the teachings in the specification. The term “substantially complete” is a
relative term and the scope of the term can ordinarily only be understood in light of the
specification. The specification, however, does not explicitly contain the term
“substantially complete.” As we stated supra, the only possible relevant terminology
appearing in the specification is directed to another relative term “high level.” This
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