Appeal No. 2000-1569
Application 08/964,686
The examiner’s position is contrary to the law. The
general rule is that a claim must set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the disclosure as it would be
by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). Acceptability of the claim language depends on
whether one of ordinary skill in the art would understand what is
claimed in light of the specification. Seattle Box Co., v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984). Based on this case law, the artisan
would clearly understand that the letter “A” in claims 1, 30 and
31 is an abbreviation for Angstroms. Therefore, we do not
sustain the examiner’s rejection of the appealed claims based on
indefiniteness.
We now consider the rejection of all the appealed claims
under 35 U.S.C. § 103 based on the teachings of Kijima or Rea.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in
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