Appeal No. 2004-2319 Page 12
Application No. 09/915,694
not he is infringing.’” Id. (bracketed text in original, quoting Morton Int’l, Inc. v.
Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir.
1993)). That test is not met here.
For all these reasons, the scope of claim 12 is unclear. The test for
definiteness is “whether one skilled in the art would understand the bounds of the
claim when read in light of the specification.” Miles Laboratories Inc. v. Shandon
Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993). See also
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65 USPQ2d
1385, 1406 (Fed. Cir. 2003): “[A]mbiguity in claim scope is at the heart of the
definiteness requirement of 35 U.S.C. § 112, ¶ 2.” Since we cannot determine
the scope of claim 12, we conclude that it is indefinite. Claim 12 is rejected
under 35 U.S.C. § 112, second paragraph.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR §
41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
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