Appeal No. 2006-0688
Application No. 09/838,425
the specification. Appellants note that the term is even used in the MPEP as exemplary
of claim language directed to statutory subject matter [brief, pages 8-10]. The examiner
responds that there is no evidence within the specification to support appellants’
definition of a computer readable medium and that it could be read on a thing like a
piece of paper that could be scanned [answer, pages 18-19]. Appellants respond that
the examiner has confused a question of claim breadth with claim definiteness [reply
brief, pages 5-7].
We will not sustain the examiner’s rejection of claim 7 as being indefinite. We
agree with appellants that the examiner’s rejection is concerned with the breadth of the
claim language rather than its definiteness. 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); In re Johnson, 558 F.2d 1008, 194 USPQ 187 (CCPA
1977). 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). We agree with appellants that the artisan having read the disclosure in this
application would understand what is covered by the claimed “computer readable
medium.”
We now consider the rejection of claims 6 and 7 as being directed to non-statutory
subject matter. With respect to claim 6, the examiner asserts that it is directed to a
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007