Appeal No. 2001-2292
Application No. 09/072,172
invention recited in the appealed claims without undue
experimentation.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, non-enablement rejection of claims 9, 14
through 16, 18 and 28.
II. The 35 U.S.C. § 112, second paragraph, rejection
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). In determining
whether this standard is met, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.
Id.
The examiner considers claims 9, 14 through 16, 18 and 28 to
be indefinite because
[t]he test characteristic values are considered
indefinite because a person wishing to avoid
infringement of claim 9 (if allowed) would not be able
to determine whether or not they are infringing because
the test procedure is not . . . sufficiently set forth
in the specification. The scope of claim 9 is not
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007