Appeal No. 2004-0136 Page 3
Application No. 09/761,340
to the Brief (Paper No. 19) and Reply Brief (Paper No. 21) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Under The Second Paragraph Of Section 112
This rejection is directed to claims 68 and 99-102, although we observe that the
examiner has not taken exception with any of the language in claim 102 and therefore it
appears inadvertently to have been included in this rejection (Answer, page 3).
The second paragraph of 35 U.S.C. § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of precision and particularity.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, 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. Evaluating the examiner’s positions
regarding this rejection leads us to conclude that it should not be sustained.
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