Appeal No. 2004-1224
Application No. 09/532,379
the entire record, including the claims, specification, the
Brief, Reply Brief, Answer, and the references used in the
rejection, we cannot sustain the examiner’s rejections on appeal.
Accordingly, the decision of the examiner is reversed.
OPINION
A. The Rejection under § 112, ¶2
The examiner finds that the word “matching” as recited in
claim 1, steps C and E, is indefinite for several reasons
(Answer, pages 6-7). The examiner finds that appellant’s
definition of “matching” is not clear, with a “very broad”
definition set forth in appellant’s remarks and no clarification
stated in the specification (Answer, page 6).
The examiner also finds that “test characteristics ... best
in class” as recited in claims 1 and 11 is indefinite, as well as
the phrases “performing tests to determine test design
characteristics” in claim 11 and “illustrate the progress” in
claims 14 and 15 (Answer, page 7).
“The legal standard for definiteness [of claim language] is
whether a claim reasonably apprises those of skill in the art of
its scope. [Citations omitted].” In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). Although appellant
has submitted dictionary definitions for “matching” (Brief,
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