Appeal No. 1999-0928
Application No. 08/334,952
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶2
A proper analysis of patentability should begin with the
second paragraph of section 112, proceed to the first paragraph,
and then analyze the prior art applied against the claimed
subject matter under sections 102 and 103. See In re Angstadt,
537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
The examiner states that, in claim 1, line 2, it remains
“unclear” whether the term “heat” constitutes “excess heat”
(Answer, page 11). Therefore the examiner concludes that the
“metes and bounds” of the claims are undefined (id.). However,
the initial burden of establishing unpatentability, on any
ground, rests with the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The legal
standard for definiteness of claim language is whether a claim
reasonably apprises those of skill in the art of its scope, when
read in light of the specification. See In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994); and In re
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