Appeal No. 2002-0911 Page 5
Application No. 09/272,115
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness 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 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 examiner considers claims 1-9 to be indefinite because it is unclear as to
how appellants are using the terms “self-contained” and “bodily movable with said base
section” to define the claimed invention over the prior art (answer, page 3). As
discussed infra, the problem appears to be not that these terms are unclear but that
appellants, in distinguishing the claims over the applied prior art, seek to assign
interpretations to this terminology which are unduly narrow as compared to the usual
and conventional meanings of these terms without the support of any specific definition
in their specification.
In proceedings before it, the PTO applies to the verbiage of claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever enlightenment by way of
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