Appeal No. 2000-0588 Page 4
Application No. 08/824,110
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness rejection
The basis of the examiner’s indefiniteness rejection of claims 19-22, as set forth
on page 2 of the final rejection, reads as follows:
These claims are drawn to circuits or circuit portions
with little if any structure to make the subject matter an
article which may be held and/or used as a toy. As such, all
claims are seen to fail to define structure in such a manner
to set forth a functional device. These claims fail to link all
elements together, many standing alone without
incorporation into the overall device.
Claims 19-22 are broad, in the sense that each is directed to a toy generally, or
to a method for operating a toy, comprising a plurality of structural elements set forth in
means-plus-function format, or a plurality of steps, without limiting the toy to, for
example, a telephone or pager. However, just because a claim is broad does not mean
that it is indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194
n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971);
In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) and Ex parte
Scherberich, 201 USPQ 397, 398 (Bd. App. 1977). The purpose of the second
paragraph of § 112 is to provide those who would endeavor, in future enterprises, to
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