Appeal No. 2004-0096 Page 6
Application No. 09/785,273
The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). In determining whether this standard is met, the
definiteness of the language employed in the claim 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. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In light of the above, we must reach the conclusion that one of ordinary skill in
the art would not be able to determine what is meant by the terminology “detachable”
and “detachably adhere” in claim 2 so as to ascertain the scope thereof as required by
35 U.S.C. § 112, second paragraph. Likewise, especially in view of the illustration of
the bisection member in appellant’s Figure 2b, one of ordinary skill in the art would be
unable to ascertain what dimensions of the bisection member are required to meet the
functions of detachable adherence and frictional engagement recited in claim 3. For
the foregoing reasons, we enter a new ground of rejection of claims 2 and 3 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the appellant regards as the invention.
Further, pursuant to our authority under 37 CFR § 1.196(b), we also reject claims
2 and 3 under the first paragraph of 35 U.S.C. § 112 because the specification does not
provide adequate disclosure of the invention so as to enable one of ordinary skill in the
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