Appeal No. 2003-1081
Application 08/581,347
OPINION
We reverse the rejection under 35 U.S.C. § 112, second
paragraph, and procedurally reverse the rejections under
35 U.S.C. §§ 102(b) and 103. Under 37 CFR § 1.196(b), we enter a
new ground of rejection of claims 21-40.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of the
appellant’s specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner argues, in reliance upon Manual of Patent
Examining Procedure (MPEP) § 2172.01, that the inventions claimed
in claims 38 and 39 are not distinctly claimed because claims 38
and 39 omit the materials and steps for making, respectively, a
semiconductor device and an electronic device (answer, page 7).
The portion of the MPEP relied upon by the examiner directed
toward omitted essential subject matter pertains to nonenablement
rejections under 35 U.S.C. § 112, first paragraph, not claim
clarity rejections under 35 U.S.C. § 112, second paragraph. The
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