Appeal No. 2002-0265 Page 11
Application No. 08/787745
problems regarding the selection of ranges found in claim 1, and we therefore will not
sustain the rejection of claim 6.
New Rejection By This Panel Of the Board
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new
rejection:
Claims 7-9 and 11-21 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.
Claim 7 is directed to a composite golf club “having a butt end comprising a
substantially cylindrical cross section” (emphasis added) which transitions to a “tip end.”
Independent claims 13 and 19 recite a butt “end” having a cylindrical cross section, and
independent claim 21 a butt “end” having “at least one portion with an outside diameter
of between .400 and .540 inches (emphasis added). In addition, claim 14 adds to claim
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