Appeal No. 2002-0266 Page 4
Application No. 09/409,672
It is the examiner’s view that claims 32, 33 and 44 are indefinite because they
depend from a base claim in which the applicator tip is recited as being “porous,” but
they recite materials “that are not known as being porous, e.g.’metal,’ ‘glass’ and
‘plastic,’ and the disclosure appears to be silent as to holes or perforations being
provided in such tips” (Paper No. 11, page 2). In response, the appellant has pointed
out where reference to porous metal, glass and plastic is made in the specification as
being known to one of ordinary skill in the art, and has submitted as evidence of this
knowledge that over five thousand patents were uncovered in a word search on “porous
metal,” “porous glass,” and “porous plastic” (Brief, pages 5-7).
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.
The appellant’s evidence has persuaded us that the examiner’s position is in
error, and we will not sustain this rejection.
The Rejections Under Section 103
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