Appeal No. 1996-3670 Page 4
Application No. 08/217,063
are being provided." (Examiner's Answer at 4.) The appellant
argues, "claim 1 recites the ‘software means’ in combination with
the computer that runs it." (Reply Br. at 2.)
“The test for definiteness is whether one skilled in the art
would understand the bounds of the claim when read in light of
the specification. Orthokinetics Inc., v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
If the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention,
Section 112 demands no more. Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed.
Cir. 1986).” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870,
875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993).
Here, as argued by the appellant, claim 1 recites the
“software means” in combination with the personal computer on
which it runs. In view of the recitation, we are persuaded that
one skilled in the art would understand that “the computer-
software combination,” (Reply Br. at 2), provides the claimed
functions of the software means. Therefore, we reverse the
rejection of claim 1 as indefinite.
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