Appeal No. 1999-0956
Application No. 08/584,084
The 35 U.S.C. § 112, second paragraph, rejection
We shall consider first the rejection under 35 U.S.C. § 112,
second paragraph, because any analysis of claims rejected under
both the first and second paragraphs of 35 U.S.C. § 112 should
begin with the determination of whether the claims satisfy the
requirements of the second paragraph. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The test for compliance with the second paragraph of § 112
is “whether the claim language, when read by a person of ordinary
skill in the art in light of the specification, describes the
subject matter with sufficient precision that the bounds of the
claimed subject matter are distinct.” In re Merat, 519 F.2d
1390, 1396, 186 USPQ 471, 476 (CCPA 1975). In other words, does
a claim reasonably apprise 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 examiner’s first reason for rejecting the claims under
35 U.S.C. § 112, second paragraph, is that the phrase “means for
guiding the leading end section to move in a second direction” in
claim 28, in combination with other claim limitations,
is indefinite since it is unclear what part of the
leading end section moves in a second direction.
(emphasis added). As such, the claims misleadingly
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