Appeal No. 2002-1397
Application No. 09/310,800
§ 1.196(b): Claim 19 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5
(Fed. Cir. 1985). The legal standard for definiteness is whether a claim reasonably
apprises those of 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 merely to determine whether the
claims do, in fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). The definiteness of the language employed must be analyzed -- not in a
vacuum, but 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.
Instant claim 19 purports “[t]he multi-recording element magnetic head assembly
of Claim 1 [an apparatus] formed in accordance with the method of Claim 11 [a
process].” The subject matter of claim 19 cannot be ascertained, at least for the reason
that same or similar structures are described by claim 1 and claim 11. For example,
claim 1 recites “a substrate” and “a thin film layer deposited on a substantially planar
surface of said substrate.” Claim 11 recites “forming a thin film layer on a substantially
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