Appeal No. 2004-2250
Application No. 09/542,154
The Examiner responds by asserting that, without proper
antecedent basis, the scope of the claim cannot be ascertained
since the phrase “method acts undertaken by the logic” refers to
method steps or operations that do not exist in base claim 1
(answer, page 20).
Analysis of 35 U.S.C. § 112, second paragraph, should begin
with the determination of whether claims set out and circumscribe
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (1971). “The legal standard for
definiteness is whether a claim reasonably apprises those of
skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
Upon a careful review of the language of claim 30, we find
that the claimed “method acts undertaken by the logic” does not
clearly refer to any specific part of the graphical user
interface of its base claim. Claim 1 includes a user terminal
and a personalized toolbar wherein various sources may correspond
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