Appeal No. 2003-1359 3
Application No. 09/285,260
Reference is made to appellants’ main and reply briefs (Paper Nos. 22 and 26) and
to the examiner’s answer (Paper No. 24) for the respective positions of appellants and the
examiner regarding the merits of these rejections.2
DISCUSSION
The 35 U.S.C. § 112, second paragraph, rejection
Considering first the standing rejection of claims 1, 3 and 24-26 under 35 U.S.C.
§ 112, second paragraph, the examiner explains this rejection as follows:
This rejection was prompted by appellant’s [sic, appellants’]
introduction of the language “attachment member” in Amendment D. It is the
Examiner [sic] position that “attachment member” is indefinite due to no
support [for this term] in the specification . . . making the intended scope
unclear. [Answer, page 4.]
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 this regard, the
definiteness of the language 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.
2In claim 24, last line, the term “the adapting device” lacks a proper antecedent.
For purposes of this appeal, we shall consider “the adapting device” as corresponding
to the previously recited “means . . . for changing.” Although this informality does not
obscure the metes and bounds of claim 24, it is deserving of correction upon return of
this application to the Technology Center.
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