Appeal No. 2002-1735 Page 4
Application No. 08/903,878
Indefiniteness Rejection of Claims 1, 8-10, 17, 18, and 39-41
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the main point of contention therebetween. The examiner asserts, "the phrase
'a fixed storage capacity smaller that quantity of image data . . .' renders the claim[s]
indefinite because it does not particularly point out or distinctly claim how fixed an
image data capacity is in order to be smaller than a quantity of image data
representative [sic] one frame of the image as claimed." (Examiner's Answer at 13.)
The appellants argue, "the Specification indicates . . . on page 31, lines 21-22, there is
a statement that 'memory 26 that [sic] is capable of storing only a few lines of image
data'. This phrase clearly identifies a fixed memory because it can only store a few
lines of image data and thus cannot expand. " (Reply Br. at 2.)
“The test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification. Orthokinetics Inc., v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986). If
the claims read in light of the specification reasonably apprise those skilled in the art of
the scope of the invention, Section 112 demands no more. Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986)."
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir.
1993).
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