Appeal No. 2003-0242 Page 4
Application No. 09/484,604
The indefiniteness rejection
We will not sustain the rejection of claims 21 to 32 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the appellant regards as the invention.
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).
The examiner's rational for this rejection is set forth in the answer (pp. 3-4) as
follows:
the use of the terminology "adapted to" makes the claims vague and indefinite
because the scope of the claims can not be ascertained, since it has been held
the recitation that an element is "adapted to" perform a function is not a positive
limitation but only requires the ability to so perform. It does not constitute a
limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
The use of the terminology "adapted to" in claim 21 does not render claims 21 to
32 vague and indefinite since the scope of the claims can be ascertained. As set forth
by the examiner, the recitation that an element is "adapted to" perform a function is a
limitation which requires only that the structure be able to perform the function. As
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