Appeal No. 2003-1836 Page 4
Application No.10/085,590
the claims." (Final Rejection at 3.1) The appellants argue, "a worker of ordinary skill in
this art would recognize that a fault is some undesired condition occurring. . . ." (Appeal
Br. at 4.)
"The test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification. Orthokinetics Inc., v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986). If
the claims read in light of the specification reasonably apprise those skilled in the art of
the scope of the invention, Section 112 demands no more. Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986)."
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir.
1993). "Even if . . . claims are . . . broader than they otherwise would be, breadth is not
to be equated with indefiniteness. . . ." In re Miller, 441 F.2d 689, 693, 169 USPQ 597,
600 (CCPA 1971).
1"We advise the examiner to copy his rejections into his examiner’s answers," Ex
parte Metcalf, 67 USPQ2d 1633, 1635 n.1 (Bd.Pat.App.& Int. 2003), rather than merely
referring to "rejections . . . set forth in prior Office Action. . . ." (Examiner’s Answer
at 3.)
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