Appeal No. 2001-0416
Application No. 09/074,292
specification does not include any objective method by which a
skilled worker could determine whether or not a given semicon-
ductor feature has this dimension. Examiner’s answer, page 2,
paragraph 1. According to appellant:
[f]or a person of ordinary skill in the art, for a
person of no skill in the art or for a person of
extraordinary skill in the art, the determination of
the “minimum pitch” is a [sic: as] simple as opening
the document called the “Design Rules” and reading the
dimension under the heading “Minimum Pitch.”
Appeal brief, paper no. 14, received June 19, 2000, page 6.
Appellant sets forth a detailed discussion in support of his
position on pages 5-9 of his appeal brief.
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). The definiteness of
the language employed in the claims must be analyzed, not in a
vacuum, but in light of the teachings of the prior art and of the
application disclosure as it would be interpreted by one of
ordinary skill in the pertinent art. Id. The burden is on the
examiner to show why one of ordinary skill in the art would not
be apprised of the scope of the claims on appeal. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
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