Appeal No. 19987-3176 Page 4
Application No. 08/388,788
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner is concerned with alleged ambiguity regarding
several words and terms of claim 1 as set forth at page 3 of the
answer. However, for reasons set forth in the briefs, the
examiner simply has not carried the burden of explaining how the
claim language does not set forth the recited apparatus in a
manner that would be reasonably understood by one of ordinary
skill in the art as interpreted in view of appellants’
specification and the prior art. The examiner’s comments
regarding room temperature at page 6 of the answer suggests that
the examiner improperly and selectively tagged particular words
and phrases as being indefinite without construing the same in
the context of the claimed invention as a whole as it would have
been understood by one of ordinary skill in the art.
Consequently, the examiner has not established how the appealed
claims run afoul of the provisions of the second paragraph of 35
U.S.C. § 112. Thus, we cannot sustain this rejection.
Rejection under 35 U.S.C. § 102
The difficulty we have with the examiner’s position
regarding the rejection of claim 1 as being anticipated by Chen
is that the examiner has not fairly explained how the coated
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