Appeal No. 2003-0503 4
Application No. 09/687,894
In rejecting the appealed claims under the second paragraph of 35 U.S.C. § 112,
the examiner states that claim 1 is indefinite “because the phrase ‘said ballast member
being sized to create an interference fit with said cavity’ is inaccurate” (final rejection, page
2). Although not expressly stated, it would appear that the examiner’s criticism of claim 1
also applies to the terminology of independent claim 10 that the ballast member includes a
weighted member “sized to create an interference fit within the cavity,” and to the
terminology of independent claim 15 that each ballast member is “capable of directly
attaching to said cavity.” We understand the examiner’s position in this regard to be that
the independent claims on appeal do not satisfy the requirement of the second paragraph
of 35 U.S.C. § 112 for definiteness because a “cavity” is an unfilled space within a mass
without any surrounding structure and, strictly speaking, a “cavity” (i.e., unfilled space)
cannot have an inference fit with another structure.2
Our difficulty with the examiner’s position is that it does not take into account that
claim language must be read in light of the supporting specification, and that claim
language need only be of such precision to reasonably apprise those of skill in the art of
the claim’s bounds. In the present instance, we think that a person of ordinary skill in the
art would understand appellant’s claim language, when read in light of the specification, as
2In light of the position taken by the examiner in rejecting the appealed claims
under 35 U.S.C. § 112, second paragraph, it is not clear why appellant’s amendment
submitted May 9, 2002 (Paper No. 6) offering to clarify the claim language was denied
entry.
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