Appeal No. 2003-1336 Page 3
Application No. 09/642,398
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 18
18. A block system for a workpiece configured to fit inside a clamp, comprising:
a first block configured to contact and interpose between
said clamp and said workpiece and having a first hole
pattern, wherein said first hole pattern comprises at least
one hole that is clear of said clamp when said first block is
interposed between said clamp and said workpiece; and
a second block configured to contact and interpose between
said clamp and said workpiece and having a seond hole
pattern differing from said first hole pattern by at least one
hole.
The Examiner’s Rejection Under Section 112, Second Paragraph
The second paragraph of 35 U.S.C. § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of precision and particularity.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
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.
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