Appeal No. 2003-2146 Page 6
Application No. 09/546,143
disclosure as it would be interpreted by one possessing the ordinary skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). Whether a claim is indefinite under 35 USC § 112, second paragraph,
depends upon whether those skilled in the art would understand what is claimed,
or the scope or the bounds of the claim, when read in light of the specification.
The threshold step in resolving this issue is to determine whether the examiner
has met his burden of proof by advancing acceptable reasoning of indefiniteness.
Accordingly, we disagree with the examiner’s assertion (Answer, page 7)
that “[t]he issue of indefiniteness is not whether one skilled in the art can
understand a term (or terms), rather it is the metes and bounds of the invention.”
As set forth in Amgen, a decision as to whether a claim is invalid under 35 U.S.C
§ 112, second paragraph, requires a determination as to whether those skilled in
the art would understand what is claimed. Based on the examiner’s assertion
(Answer, page 7), and the evidence of record, it appears that there is no dispute
that a person of ordinary skill in the art would understand what is claimed.
Instead, it appears that the examiner is concerned solely with the breadth of the
claimed invention. In this regard, we would agree with the examiner that the
scope of the claim is extremely broad. However, as the examiner recognizes
(Answer, page 7), “breadth is not indefiniteness….” In re Miller, 441 F.2d 689,
693, 169 USPQ 597, 600 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness.”).
In our opinion, when the claims are considered as a whole, together with
the prior art and appellants’ disclosure, a person of ordinary skill in the art would
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007