Appeal No. 2005-2422
Application No. 09/760,905
OPINION
We have carefully considered the entire record before us,
and we will sustain the indefiniteness rejection of claims 11 and
17, reverse the indefiniteness rejection of claims 10, 16 and 20,
sustain the anticipation rejection of claims 1 through 23 and
sustain the obviousness rejection of claims 11 and 17.
Turning first as we must to the indefiniteness rejection,
our analysis begins with a determination of whether the claims
do, in fact, set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in
light of the application disclosure as they would be by one
possessing ordinary skill in the art. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner’s finding (answer, page 4) that claims 10,
16 and 20 are indefinite because they recite intended use
statements per se lacks merit. Such expressions may be used in
claims, and they are judged for definiteness under the second
paragraph of 35 U.S.C. § 112 like any other claimed expression.
The examiner’s analysis and explanation of In re Casey1, 370 F.2d
576, 580, 152 USPQ 235, 238 (CCPA 1967) applies to a prior art
1 A statement of intended use does not serve to distinguish
structure over the prior art.
3
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