Appeal No. 2006-1378
Application No. 09/845,852
the specification provides an example of normal in that calibration gains which are
above a predetermined threshold are considered to be not normal. Appellant argues
that the artisan having read this application would understand what is meant by a gain
being normal [brief, pages 5-6]. The examiner responds that different people in the art
may have differing views as to what is normal [answer, page 5]. Appellant responds
that the word “normal” does not require that everyone in the art have the same range of
numbers. He notes that those skilled in the art would understand what is claimed when
the claims are read in light of the specification [reply brief, pages 1-2].
We will not sustain the examiner’s rejection of claims 1 and 10. 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 appellant that what is normal
is described in the specification as being values which fall within a predetermined
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