Appeal No. 2004-1890 5
Application No. 09/225,974
are “specified in the binding data elements.” While the claims are perhaps broader without
the inclusion of the Examiner’s suggested language (Answer, page 3) “specified for each
bindable data element” or “specified within each bindable data element,” no uncertainty or
lack of specificity exists as asserted by the Examiner. The breadth of a claim is not to be
equated with indefiniteness. In re Miller, 441 F.2d 689, 692, 169 USPQ 597, 600 (CCPA
1971).
With respect to claims 11 and 18, we also find no ambiguity or lack of clarity in the
language of these claims despite the fact that “fragment base” and “fragment database”
are used in different portions of the claims. If the scope of a claim, when read in light of
the specification, would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite. The failure to provide explicit antecedent basis for terms does not
always render a claim indefinite. Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. &
Inter. 1992).
It is our view that the skilled artisan, having considered the specification in its
entirety, would have no difficulty ascertaining the scope of the invention recited in claims 1,
11, and 18. Therefore, the rejection of claims 1, 11, and 18 under the second paragraph
of 35 U.S.C. § 112 is not sustained.3
3 In view of our decision in this case, the Examiner should reconsider the refusal to enter the
amendment after final filed April 30, 2003.
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