Appeal No. 2000-0588 Page 5
Application No. 08/824,110
approach the area circumscribed by the claims of a patent, with adequate notice
demanded by due process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate the possibility of
infringement and dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). The examiner has not explained why one of ordinary skill in the art
would not have been able to accurately determine the metes and bounds of claims 19-
22. We disagree with the examiner that the recited elements of these claims are not
linked together so as to set forth a functional device. Thus, we shall not sustain the
examiner’s rejection of claims 19-22 under the second paragraph of 35 U.S.C. § 112,
second paragraph.2
The prior art rejections
Turning first to the examiner’s rejection of claims 19-22 as being anticipated by
Sirota, we note that claim 21 recites a means for generating a random timing signal and
claim 22 recites a step of generating a random timing signal. Appellants’ specification
(page 7, lines 23-26) clearly sets forth a definition3 of “random” which distinguishes it
2 For the reasons discussed below in the new ground of rejection pursuant to 37 CFR § 1.196(b),
however, we have determined that the recitation of a means or step of selecting said message “in
response to said attention signal” in claims 19, 20 and 22 is inconsistent with appellants’ underlying
disclosure and consequently renders the metes and bounds of these claims indefinite.
3 In proceedings before it, the PTO applies to the verbiage of claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997).
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