Appeal No. 2002-0225 Page 5
Application No. 08/332,275
of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph, is
inappropriate.
Furthermore, the appellants may use functional language, alternative
expressions, negative limitations, or any style of expression or format of claim which
makes clear the boundaries of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 213-14, 169 USPQ 226, 228-29
(CCPA 1971), a claim may not be rejected solely because of the type of language used
to define the subject matter for which patent protection is sought.
With this as background, we analyze the specific rejection under 35 U.S.C.
§ 112, second paragraph, made by the examiner of the claims on appeal.
The examiner concluded (answer, p. 4) that the phrase "a removable insole" as
recited in independent claims 19 and 25 is functional, indefinite and incomplete
because it contains functional language not supported by recitation in the claim of
sufficient structure to warrant the presence of such language. The examiner further
stated that it was not clear what structural limitations the appellants intended to
encompass with such language.
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