Appeal No. 2002-2021 Page 7
Application No. 09/024,077
Claims 1-7, 11, 12 and 14-16 stand rejected under the second paragraph of
Section 112 as being indefinite, for several reasons. The first is because the phrase in
claim 1 of “an interconnection . . . consisting of essentially a resilient element . . . is of
error.” Apparently, this refers to the embodiment of Figure 5, wherein the examiner
considers the “base” to be pedestal 118, and there is an additional coil spring (116)
between the trough and the base. To cure this problem, the examiner suggests that the
phrase be changed to “operatively connected” (Answer, page 6).
Our initial reaction to the examiner’s position is that we cannot appreciate why
“operatively connected” would cause the claim to have a different meaning than
“interconnection,” and thus overcome the alleged indefiniteness. The controlling issue,
however, is whether a claim sets out and circumscribes a particular area with a
reasonable degree of precision and particularity, for that is the requirement established
by the second paragraph of Section 112. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977).4 We answer this question in the affirmative, that is,
it is our opinion that one of ordinary skill in the art would have been able to determine
the metes and bounds of the invention from the language used in claim 1 taken in view
of the specification.
4In 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.
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