Appeal No. 2003-1081
Application 08/581,347
portion of the relied-upon MPEP section directed toward claim
clarity pertains to claims in which essential elements are
recited but not interrelated, which is not the situation in the
present case.
The examiner argues that because the components of the
semiconductor device in claim 38 and the electronic device in
claim 39 are omitted, it is unclear what the semiconductor device
and electronic device are (answer, page 12). The claims broadly
encompass any semiconductor device and electronic device, and the
claims are not indefinite merely because they are broad. See In
re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970)
(“Breadth is not indefiniteness.”)
Thus, the examiner has not carried the burden of
establishing that 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, fails to set out and
circumscribe a particular area with a reasonable degree
of precision and particularity. Accordingly, we reverse the
rejection under 35 U.S.C. § 112, second paragraph.
Procedural reversal and new ground of rejection
Claims 21-40 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007