Appeal No. 2002-1281
Application No. 08/857,711
The inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of the language
employed 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 skill in the pertinent art. In re Moore, 439 F2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
Conflict between the specification description of the
invention and what is claimed as the invention gives rise to a
valid rejection based upon the second paragraph of 35 U.S.C.
§ 112. In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971).
The examiner has rejected claims 8 and 18 because these
claims require that the first and second codes are identical. It
is the examiner’s position that this “contradicts applicant’s
arguments that the claimed codes need not be the same.
Therefore, the claims do not point out what applicant regards as
the invention” (answer-page 3).
First, we find no contradiction between the specification
description of the invention and what is claimed. In fact, the
original disclosure contained claims (e.g., original claims 18
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