Appeal No. 2001-1473
Application 08/946,736
IV. New ground of rejection
Claim 15, and claims 16, 17, 19, 27 and 28 which depend
therefrom, are rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the
subject matter the appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). The purpose of this
requirement is to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the claims of a
patent with the 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).
As indicated above, claim 15 recites a drill sharpener
comprising, inter alia, a grinding wheel of a “small” diameter.
Although § 112, ¶ 2, does not require exact precision in claim
language, definiteness problems often arise when words of degree
(such as “small”) are used in a claim. Seattle Box Co. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
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