Appeal No. 2005-0453 Page 12
Application No. 09/893,866
OTHER ISSUES
Upon further prosecution, the Examiner may wish to determine whether the phrase
“process selected from the group including” in claim 7 renders claim 7 indefinite under
35 U.S.C. § 112, ¶ 2. The key question is whether the word “including” opens the group up
to other unrecited forms of sputtering such that one of ordinary skill in the art would not be
reasonably apprised of the scope of the claim. See In re Warmerdam, 33 F.3d 1354, 1361,
31 USPQ2d 1754, 1759 (Fed. Cir. 1994)(The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope.).
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-23 under 35 U.S.C.
§ 103(a) is affirmed.
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