Appeal No. 2004-2226
Application NO. 10/066,421
V. New ground of rejection
The following rejection is entered pursuant to 37 CFR
§ 41.50(b).
Claims 4, 10 and 19 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellants regard as the
invention.
The second paragraph of § 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 determining whether this
standard is met, 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.
Claims 4, 10 and 19 recite a substrate which is “electro-
less.” The underlying specification provides no guidance as to
what this means. The appellants acknowledge that the ordinary
and accustomed definition of “electro-less” is “[t]he deposition
of a metallic coating, usually nickel, on a component by chemical
means rather than by electroplating” (see the supplemental brief
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