Appeal No. 2003-0574
Application No. 09/568,616
the metes and bounds of what is being claimed. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 13, 14, 20, 22, 23 and 27 under 35 U.S.C.
§ 112, second paragraph as indefinite.
According to the Examiner, the claims are indefinite because “[i]t is not clear
whether the claims are directed to a containment structure per se, as stated in the
preamble of claim 13, or to the combination of a containment structure and flywheel as
implied in the last two lines of claim 13 where the impedance matching material is
defined as being between the flywheel and the three containment layers. Similarly, claim
22 implies that a flywheel is being claimed in combination with the containment structure
in view of the term ‘and an associated flywheel’ yet the preamble is directed to a
containment structure per se.” (Final Rejection, paper no. 18, p. 2).
We determine that the Examiner has not met the initial burden by failing to present
convincing reasons why one of ordinary skill in the art would not be appraised of the
scope of the claims on appeal. The subject matter of claims 13 and 22 is directed to a
containment structure. We find that the disputed language of claims 13 and 22 defines
the location of a layer that has impedance matching characteristics relative to the flywheel
that is being contained by the claimed invention and not the flywheel per se. We
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