Appeal No. 2002-0894
Application No. 09/283,650
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). In making this
determination, the definiteness of the language employed in the
claims 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. Id. Moreover, in
setting forth the claimed subject matter, there is nothing
intrinsically wrong with defining something in a claim by what it
does rather than by what it is. In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981); In re Swinehart, 439 F.2d
210, 213, 169 USPQ 226, 228 (CCPA 1971).
The examiner’s reasons for calling into question the
appealed claims’ compliance with the second paragraph of 35
U.S.C. § 112, namely, that the claims do not set forth the
particulars of the guides for regulating the tilting of the
ejector, or how the ejector is connected to the actuator, or the
attachment point of the actuator relative to the ejector’s
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