Appeal No. 2005-2695
Application No. 10/280,926
35 U.S.C. § 112, Second Paragraph
We consider next the Examiner's 35 U.S.C. § 112, second paragraph, rejection of
claims 7-12 as failing to particularly point out and distinctly claim the invention. We note
that the general rule is that a claim must set out and circumscribe a particular area with
a reasonable degree of precision and particularity when read in light of the disclosure as
it would be by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). Acceptability of the claim language depends on whether one of ordinary
skill in the art would understand what is claimed in light of the specification. Seattle Box
Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574
(Fed. Cir. 1984).
The examiner sets forth the claim language which is found to lack that
reasonable degree of precision and particularity when read in light of the overly concise
specification discussed above. (Answer at page 4-5.) Appellants summarily responds
to the examiner’s prima facie case by stating “[p]lainly it does” and “clearly it does”, “the
claim means exactly what it says” and “there is nothing unclear about the claim” (Brief at
page 11.) We find these arguments to clearly lack substance or merit. Just as
summarily, we find these unsupported arguments to be unpersuasive of error by the
examiner. As with the above discussion of written description, appellants finally submit
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