Appeal No. 2004-0323 Page 10
Application No. 09/716,045
The indefiniteness rejection
We sustain the rejection of claims 2, 7, 10 and 12 under 35 U.S.C. § 112,
second paragraph, but not the rejection of claims 4 and 13.
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.
The examiner's focus during examination of claims for compliance with the
requirement for definiteness of 35 U.S.C. § 112, second paragraph, is whether the
claims meet the threshold requirements of clarity and precision, not whether more
suitable language or modes of expression are available. Some latitude in the manner
of expression and the aptness of terms is permitted even though the claim language is
not as precise as the examiner might desire. If the scope of the invention sought to be
patented cannot be determined from the language of the claims with a reasonable
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