Appeal No. 2003-1572
Application No. 09/661,747
precision and particularity. In re Johnson, 558 F.2d 1008, 194
USPQ 187 (CCPA 1977). In determining whether this standard is met,
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 particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill
in the pertinent art. Id.
To the extent that it is not reasonably clear on its face,
the meaning of the phrase “a portion thereof” appearing in claim 14
is readily apparent when the claim is read in light of the
underlying disclosure. See, for example, the second paragraph
under the heading “Example 3” on page 16 of the specification,
where pillows 45 may be attached to the garment 47 using hook and
loop fasteners or similar means to thereby become a portion of the
garment. Hence, the examiner’s concern that the language in
question renders claim 14 indefinite is unfounded.
The 35 U.S.C. § 103 rejection
For the reasons stated infra in our new rejection under 37 CFR
§ 1.196(b), we are of the opinion that claims 7-14 fail to satisfy
the requirements of 35 U.S.C. § 112, second paragraph. We note
that normally a claim which fails to comply with the second
paragraph of 35 U.S.C. § 112 will not be analyzed as to whether it
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