Appeal No. 2003-0503 3
Application No. 09/687,894
Reference is made to appellant’s main and reply briefs (Paper Nos. 10 and 13) and
to the examiner’s final rejection and answer (Paper Nos. 5 and 11) for the respective
positions of appellant and the examiner regarding the merits of these rejections.
Discussion
Rejection (1)
The test for compliance with the second paragraph of 35 U.S.C. § 112 is “whether
the claim language, when read by a person of ordinary skill in the art in light of the
specification, describes the subject matter with sufficient precision that the bounds of the
claimed subject matter are distinct.” In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471,
476 (CCPA 1975). In other words, does a claim reasonably apprise those of skill in the art
of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The focus in regard to compliance with the requirement for definiteness of 35
U.S.C. § 112, second paragraph, should be whether the claims meet the threshold
requirements of clarity and precision (i.e., they define the metes and bounds of a claimed
invention with a reasonable degree of precision and particularity), not whether more
suitable language or modes of expression are available. Some latitude in the manner of
expression and the aptness of terms is permitted even though the claim language is not as
precise as the examiner might desire. Moreover, the circumstance that a claim is broad
does not automatically render the claim indefinite. See, for example, In re Miller, 441 F.2d
689, 693, 169 USPQ 597, 600 (CCPA 1971).
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