Appeal No. 2003-0512
Application 09/184,805
New Ground of Rejection
Pursuant to our authority under 37 CFR § 1.196(b), we enter
the following new rejection.
Claims 14 and 15 are rejected under 35 U.S.C. § 112, second
paragraph.
In order to satisfy the second paragraph of § 112, a claim
must accurately define the claimed subject matter in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1365, 178
USPQ 486, 492 (CCPA 1973). Moreover, while the claim language
may appear, for the most part, to be understandable when read in
the abstract, no claim may be read apart from and independent of
the supporting disclosure on which it is based. In re Cohn, 438
F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971); In re Moore, 439 F.2d
1232, 1235 n.2, 169 USPQ 236, 238 n.2 (CCPA 1971).
Applying these principles to the present case, while the
claim language “a barrier layer . . . disposed between the filler
layer and the stop layer” appearing in claim 14 may appear to be
reasonably clear when read in a vacuum, this claim language, when
read in light of appellants’ supporting disclosure, and
especially drawing Figure 4C, raises an unreasonable degree of
uncertainty as to what the claim language may mean. More
particularly, in appellants’ disclosed barrier layer embodiment
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