Ex Parte Schumacher - Page 4




              Appeal No. 2004-2042                                                                  Page 4                
              Application No. 10/019,269                                                                                  



                     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.                                                                                              


                     Furthermore, the appellant may use functional language, alternative expressions,                     
              negative limitations, or any style of expression or format of claim which makes clear the                   
              boundaries of the subject matter for which protection is sought.  As noted by the Court                     
              in In re Swinehart, 439 F.2d 210, 213-14, 169 USPQ 226, 228-29 (CCPA 1971), a claim                         
              may not be rejected solely because of the type of language used to define the subject                       
              matter for which patent protection is sought.  In addition, breadth of a claim is not to be                 
              equated with indefiniteness.  See In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600                        
              (CCPA 1971).                                                                                                










Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007