Appeal No. 2004-0170
Application No. 09/288,450
DISCUSSION
I. The 35 U.S.C. § 112, second paragraph, rejection of claims 1,
5 and 11
As indicated above, independent claim 1 recites a shear
comprising, inter alia, blades “constructed and arranged to
further deflect a tail end of said leading segment away from said
plane while directing a front end of said trailing segment back
to said plane.” Independent claims 5 and 11 contain similar
limitations. The examiner views these recitations as rendering
claims 1, 5 and 11 indefinite because:
[i]t is not clear how the blades are “constructed”
to perform the function of deflecting a tail end of the
leading segment...”. This appears to be a function of
the radius of the blade, which is clearly already set
forth. What structure performs this function [answer,
page 3].2
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 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
2 Given this rationale, it is unclear why the examiner did
not include claims 2 through 4, which depend from claim 1, in the
rejection.
4
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