Appeal No. 1999-1876
Application No. 08/626,488
requirements of 35 U.S.C. § 112, second paragraph.
The test for definiteness under § 112, second paragraph, is
whether those skilled in the art would understand the scope of
the claims when the claims are read in light of the
specification. Union Pacific Resources Co. v. Chesapeake Energy
Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir. 2001);
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). We do not consider that claims 10 and 12 to 15 meet
this criterion, for the reasons stated below.
(a) Independent claims 10 and 15 both recite a method for
manufacturing a ball joint "consisting of" a ball ended spindle
and a socket. Since "consisting of" is a closed term, these
claims would seem to be limited to manufacturing a ball ended
spindle and a socket. However, each claim further recites that
"a connection piece (3) or a complete chassis strut of said
socket (29) is manufactured in said injection molding tool (1)
simultaneously with said socket (29)" (claim 10, lines 12 to 14),
or "simultaneously forming a connection piece of said socket in
said injection molding tool" (claim 15, lines 15 and 16). These
recitations that additional parts are manufactured or formed in
the method are inconsistent with the recitation that the method
is for manufacturing a ball joint "consisting of" a ball ended
3
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