Appeal No. 2003-1512 4
Application No. 09/256,709
the second paragraph, then proceed with the first paragraph. In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976). “The legal standard for definiteness
[under the second paragraph of 35 U.S.C. § 112] is whether a claim reasonably apprises
those of [ordinary] skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361,
31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The inquiry is to determine whether the
claim sets out and circumscribes a particular area with a reasonable degree of precision and
particularity. The definiteness of the language employed in a claim must be analyzed not in
a vacuum, but in light of the teachings of the particular application. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that the claimed subject matter is indefinite in that,
“[t]he failure to disclose the type of molecular weight is indefinite because the scope of the
claims is not clear.” See Answer, page 9. We agree with the examiner’s position.
The claimed subject matter is directed to a methyl methacrylate polymer having a
molecular weight of 10,000 to 200,000. We find that the specification is devoid of any
disclosure identifying whether the stated molecular is a weight average molecular weight, a
number average molecular weight or some other designated polymeric molecular weight.
Weight average molecular weight is related to the weight of the molecules in a certain
molecular weight class, whereas number average molecular weight is dependent on the
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