Appeal No. 2004-2250
Application No. 09/542,154
to the icons, but no method acts are recited. Although, the
claim includes some functional language related to configuring
the icons and causing the data to be presented on a monitor, it
cannot be determined with sufficient certainty what is meant by
“the logic” and which method acts claim 30 is referring to.
Claims are considered to be definite, as required by the second
paragraph of 35 U.S.C. § 112, when they define the metes and
bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958, 189 USPQ 149, 151 (CCPA 1976). Here, the improper
antecedent basis of the claimed terms in claim 30 prevents us
from defining the scope of the claim with the level of precision
and certainty required by our reviewing court.2 Accordingly, we
will sustain the rejection of claim 30 under the second paragraph
of 35 U.S.C. § 112.
Turning now to the 35 U.S.C. § 103 rejection of claims 1, 2
and 30, we observe that the Examiner relies on Brown for teaching
a method for customizing a toolbar for configuring a set of icons
to cause data from their corresponding sources be displayed on
2 It is not clear to us why Appellants have not amended the claim to
correct the antecedent problem as Appellants refer to the disputed phrase as
“insubstantial” (supplemental brief, page 11).
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