Appeal No. 2003-0124
Application No. 09/487,832
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (1971). Furthermore, our reviewing court
points out that a claim which is of such breadth that it reads on
subject matter disclosed in the prior art is rejected under
35 U.S.C. § 102 rather than under 35 U.S.C. § 112, second
paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197
(Fed. Cir. 1983) citing In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970). "The legal standard for
definiteness is whether a claim reasonably appraises those of
skill in the art of its scope." In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
We fail to find that an example given in the preamble makes
the claims indefinite so that one of ordinary skill in the art
could not ascertain their scope. The only question is whether or
not that language provides patentable weight. Therefore, the
Examiner is questioning breadth and not whether the claims fail
1010
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