Appeal No. 98-0584
Application 08/238,948
lengthy list (including those not specifically mentioned
below), we will not support the examiner's position.
The legal standard for indefiniteness is whether a claim
reasonably apprises those of skill in the art of its scope.
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed.
Cir. 1994). A degree of reasonableness is necessary. As the
court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), the determination of whether the claims
of an application satisfy the requirements of the second
paragraph of § 112 is
merely to determine whether the claims do,
in fact, set out and circumscribe a
particular area with a reasonable degree of
precision and particularity. It is here
where the definiteness of language employed
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. [Emphasis added;
footnote omitted.]
In other words, there is only one basic ground for rejecting a
claim under the second paragraph of § 112 as being indefinite,
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007