Ex Parte Rodriguez - Page 4




              Appeal No. 2004-1331                                                                  Page 4                
              Application No. 09/812,664                                                                                  


                     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 can be determined from the language of the claims with a reasonable degree                         
              of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph, is                         
              inappropriate.                                                                                              


                     With this as background, we turn to the specific bases for the rejection under                       
              35 U.S.C. § 112, second paragraph, made by the examiner.  The two bases set forth by                        








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