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.
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