Appeal No. 2002-1974
Application No. 09/023,953
claim 20 as unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Hitachi and Cyron as applied to 1, 3, 5 to 7, 12, 13, 15, 18 and 19, further combined with
Kitzner. (Answer, pp. 3 to 10).
DISCUSSION
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellants concerning the above-noted rejection, we refer to the Answer and the Briefs.
I. The Rejection under Section 112, ¶2
The Examiner must demonstrate that the claims do not “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), emphasis added. The purpose
of the second paragraph of Section 112 is to basically insure an adequate notification of
the metes and bounds of what is being claimed. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 1, 3, 5 to 7, 9 to 20 under 35 U.S.C. § 112,
second paragraph as indefinite.
According to the Examiner, the claims are indefinite because “claim 1, lines 8-10
the language of the claim is directed to a method limitation which renders the claim vague
and indefinite as it is unclear as to what structural limitation applicants are attempting to
recite.” (Answer, p. 3).
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