Appeal No. 2002-1823
Application 09/575,551
F.2d 1395, 1403-1404, 169 USPQ 473, 479 (CCPA 1971)), and hence
will not be further addressed in this decision.
II. The 35 U.S.C. § 112, second paragraph, rejection
The examiner considers claims 56, 57, 62, 64 and 65 to be
indefinite due to the reference in the preambles of independent
claims 56 and 65 to “similar articles.” According to the
examiner, “it is unclear what articles are part of the claimed
invention” (final rejection, page 3).
The appellants, referring to the passage from page 1 in the
specification reproduced above, submit that “[t]he term ‘and
similar articles requiring very low contaminant levels,’ within
the context of claims 56 and 65, read in light of the
specification meets the requirements of 35 USC § 112, second
paragraph, as the person skilled in the art will understand the
classification of articles included by the claim language”
(brief, page 6).
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 purpose of this
requirement is to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the claims of a
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