Appeal No. 2006-1189
Application 10/707,148
evaluating claims under 35 U.S.C. § 112, second paragraph, the examiner should always
keep in mind that this section of the Statute essentially requires that claims set out and
circumscribe a particular area with a reasonable degree of precision and particularity, and
that in making this determination, the definiteness of the language employed in the claims
under consideration 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 such would be interpreted by
one possessing the ordinary level of skill in the pertinent art. See In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
The reasonableness standard for evaluating clarity and precision under 35 U.S.C. § 112,
second paragraph, provides an applicant with some latitude in the manner of expression
and the aptness of terms used in the claims, even though the claim language may not be as
precise as the examiner might desire. Thus, if the scope of the invention sought to be
patented can be determined from the language of the claims with a reasonable degree of
certainty, a rejection of such claims under 35 U.S.C. § 112, second paragraph, is not
appropriate. In addition, it should be kept in mind that mere claim breadth is not to be
equated with indefiniteness. See In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600
(CCPA 1971).
We recognize that in the present case the appellant has not defined the structure of the
barrier used in the claimed method by specifying a fixed range of height, length and width
dimensions, but has instead defined at least the height and width of the barrier in terms of
the infant and/or older children and adults that might encounter the barrier and seek to cross
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