Appeal No. 2003-0360 Page 6
Application No. 09/264,398
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 has explained this rejection in terms of how the rectangular cross-
sectional configuration would not meet the objectives set forth in the appellants’
specification, that is, that it would not present a “substantially streamlined” profile, as is
stated on page 3, for example. As we view claim 33, it requires that the strut, which is
the entire claimed device, and the tube member that constitutes a substantially internal
component of the strut, both have “substantially rectangular cross-sectional
configurations.” Such is not described in the specification, and therefore the recitation
of two components “of substantially rectangular cross-sectional configuration” causes
the claim not to set out the invention with a reasonable degree of precision and
particularity, placing one of ordinary skill in the art in the position of being unable to
determine its metes and bounds based upon the language of the claim as interpreted in
view of the specification. The claim therefore is indefinite. The appellant’s arguments
have not convinced us otherwise.
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