Appeal No. 2005-1349 Page 3 Application No. 10/079,686 OPINION In reaching our decision in this appeal, we have given careful consideration to the appellants' specification and claims, and to the respective positions articulated by the appellants and the examiner. As a consequence of our review, we make the determinations which follow. The initial burden of establishing a prima facie case on any ground under the second paragraph of § 112 rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) ("As discussed in In re Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this determination, the definiteness of the language employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. Id.Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007