Appeal No. 2004-0107 Page 4
Application No. 09/963,122
an inner coat laid adhering to the inside of said sponge
layer, said inner coat being made of a cloth, wherein said
rubber layer is thin enough not to dull the user’s foot touch to
a soccer ball while providing an elasticity both to contribute
to a repulsive force applied to the soccer ball when colliding
with said soccer shoe and to alleviate the pain of the foot
caused by kicking said ball.
The Rejection Under The Second Paragraph Of Section 112
On pages 4 and 5 of the Answer, the examiner has taken issue with the following
descriptive terminology, for the reasons here stated, concluding therefrom that the
claims are indefinite:
(1) In claims 13 and 19 “thin enough to be used” and “ordinary soccer
shoe” are not clear as what is meant to be encompassed, and the metes
and bounds of the claim cannot be determined.
(2) In claims 13 and 19 the meaning is not clear of the phrase “thin
enough not to dull the user’s foot touch to a soccer ball while providing an
elasticity both to contribute . . .” in that this could vary with different users.
(3) In claims 13 and 19 it is not clear what is meant by “providing an
elasticity.”
(4) In claim 20 it is not clear what is meant to be encompassed by
“sufficiently thin” or what this phrase means, and it is not clear what is
meant by the limitations recited in the last six lines of the claim.
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
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