Appeal No. 2003-1310
Application No. 09/761,738
In response, the Examiner indicates that the accepted
meaning of the term “intellectual property” is “intangible
creation of the human intellect that are [is] protected by law”
which indicates that the claimed term is indefinite (answer, page
4). The Examiner further argues that because the term
“intellectual property” may be used to mean different things, the
scope of the claims is indefinite (id.).
Analysis of 35 U.S.C. § 112, second paragraph, should begin
with the determination of whether claims set out and circumscribe
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (1971). “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). Furthermore, it is
settled that a claim which is of such breadth that it reads on
subject matter disclosed in the prior art is rejected under 35
U.S.C. § 102 rather than under 35 U.S.C. § 112, second paragraph.
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