Appeal No. 2002-1498
Application No. 09/042,202
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
With regard to the rejection under 35 U.S.C. 112, second
paragraph, under this statutory section, the inquiry is whether a
claim does, in fact, set out and circumscribe a particular area
with a reasonable degree of precision and particularity. It is
here where the definiteness of the 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 skill in the
pertinent art. In re Moore, 439 F2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
While the examiner protests that there is no antecedent
basis for the phrase, “the step of transferring” on line 5 of
claim 14, and we do agree that the claim structure is a bit
awkward in this regard, we will not sustain this rejection
because, after a careful reading of the claim and the
specification, it is clear that “the step of transferring” refers
to the subsequent paragraph, beginning “transferring the initial
-5–
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007