Appeal No. 2006-1077
Application No.10/034,907
Discussion
Section 112 Rejection
Claims 14, 16, 18 and 19 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. The examiner maintains that the recitation of a yarn weight that is “not less
than a yarn number of about 24" is indefinite because “yarn number” is a relative
measure of the fineness of the yarns. Final Rejection, p. 3. Appellants note that the
Complete Textile Glossary, relied on by the examiner, defines “yarn number” for
manufactured filament yarns as the “direct yarn number” (equal to linear density) which
is mass per unit length of yarn. Appeal Brief, p. 5. Appellants assert that the meaning of
the yarn number would be clear to one of ordinary skill in the art. Id. The examiner
maintains that while “yarn number” is a defined term of art, the specification must
provide the units of mass and length in order for the number to have meaning.
The relevant inquiry under § 112, second paragraph, is whether the claims
delineate to a skilled artisan the bounds of the invention. See In re Venezia, 530 F.2d
956, 958, 189 USPQ 149, 151 (CCPA 1976).). In interpreting claim terms, we rely on
the written description for guidance in ascertaining the scope and meaning of the claims.
See Phillips v. AWH Corp., 415 F.3d 1303, 1317, 75 USPQ2d 1321, 1329 (Fed. Cir.
2005) (en banc). In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997). See Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48
USPQ2d 1117, 1122 (Fed. Cir. 1998). ("[W]here there are several common meanings for
a claim term, the patent disclosure serves to point away from the improper meanings and
toward the proper meaning.").
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