Appeal No. 2003-0745 Page 4
Application No. 09/161,970
determination, the definiteness of the language employed in the claims must be
analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for compliance with the
requirement for definiteness of 35 U.S.C. § 112, second paragraph, is whether the
claims meet the threshold requirements of clarity and precision, 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. If the scope of the invention sought to be
patented can be determined from the language of the claims with a reasonable degree
of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph, is
inappropriate.
With this as background, we find ourselves in agreement with the appellant
(brief, pp. 4-8) that the claims on appeal comply with 35 U.S.C. § 112, second
paragraph. We have analyzed the specific rationales (answer, pp. 3-4) raised by the
examiner for the rejection under 35 U.S.C. § 112, second paragraph, and fail to see
how the metes and bounds of the claims on appeal would not be understood with a
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007