Appeal No. 2003-0016 Page 4
Application No. 09/400,613
Claims are considered to be definite, as required by the second paragraph of
35 U.S.C. § 112, when they define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958,
189 USPQ 149, 151 (CCPA 1976).
Claim 27 reads as follows:
A method of forming a deposit in making semiconductor devices
comprising the steps of:
forming at least one annular opening in a stencil creating an inner
member inward of said opening and an outer member outward of said opening;
and; [sic]
maintaining a physical connection between said inner and outer members.
The examiner's basis for this rejection (answer, pp. 5-6) was that the scope of
claims 27 to 29 was unclear. Specifically, the examiner commented that claim 27
appears to be a method of depositing according to the preamble of the claim (i.e., a
method of forming a deposit in making semiconductor devices) while the body of the
claim is directed only at preparing a stencil (i.e., forming at least one annular opening in
a stencil creating an inner member inward of said opening and an outer member
outward of said opening; and maintaining a physical connection between said inner and
outer members). The examiner then stated that it was unclear if appellants intended to
claim a method of depositing or a method of preparing a stencil.
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