Appeal No. 2001-2454 Page 4
Application No. 09/267,355
is provided. These are two different steps and, in our view, do not give rise to
indefiniteness.
The rejection under 35 U.S.C. § 112, second paragraph, is not sustained.
New Rejection Entered By The Board
Pursuant to our authority under 37 CFR 1.196(b), we enter the following new
rejection:
Claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
the appellants regard 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). In making this
determination, 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. It is against this backdrop that we have
evaluated certain of the language in the two independent claims, and found it to be
indefinite.
Independent apparatus claim 1 recites a turbine which is adjustable via an
automatic turbine controller during the “firing” (running) mode of engine operation and
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