Appeal No. 2003-1007
Application No. 09/336,368
We reverse these rejections for the reasons set forth in the
appellants’ briefs.
35 U.S.C. § 112, ¶2
The examiner criticizes the language of claim 21 for several
reasons (answer, pages 4-6), but we do not find any of them
sufficient to establish a prima facie case of indefiniteness.
The examiner argues that “what is condensed is not clearly
related to a ‘copolymer layer; i.e., has no necessary or
positively claimed relationship [sic]...” (Answer, page 4.) We
disagree. Appealed claim 21, when read in light of the
specification (page 5, lines 28-31 and page 27, lines 25-26),
reasonably apprises one skilled in the relevant art that the p-
xylylene and the comonomer are condensed on a substrate and then
polymerized to form a copolymer layer on the substrate. In this
regard, we remind the examiner that the test for definiteness
under 35 U.S.C. § 112, second paragraph, is whether one skilled
in the art would understand the bounds of the claim when read in
light of the specification. Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir.
1986). That is, a claim complies with the second paragraph of
section 112 if, when read in light of the specification, it
reasonably apprises those skilled in the art of the scope of the
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