Appeal No. 2004-0622 Page 4
Application No. 09/875,602
cannot agree with the examiner that the metes and bounds of claim 11 cannot be
determined because of the language criticized by the examiner. A degree of
reasonableness is necessary. As the court stated in In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971), the determination of whether the claims of an
application satisfy the requirements of the second paragraph of Section 112 is
merely to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of language employed 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. [Emphasis ours; footnote omitted.]
Here, while the language “before said plate cylinder reaches said nip” and “before said
roller reaches said nip” is perhaps inarticulate, inasmuch as the plate cylinder and
applicator roller, as arranged as illustrated in appellants’ drawing, both have a surface
portion which is always located at the nip and other surface portions which are not
located at the nip and thus always “reach the nip,” it cannot seriously be contended that
one of ordinary skill in the art would not understand that claim 11 recites a dampening
unit for applying said dampening medium to a portion of said plate cylinder upstream of
said nip and an inking unit for applying ink to a portion of said ink applicator roller
upstream of said nip. Thus, in our opinion, the language alluded to by the examiner in
rejecting claim 11 does not in fact render claim 11 indefinite. Accordingly, we shall not
sustain this rejection.
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