Appeal 2006-2120
Application 09/890,863
§ 102(b) essentially for the reasons stated in the Answer, as well as those
reasons set forth below. Accordingly, the decision of the Examiner is
AFFIRMED-IN-PART. Additionally, pursuant to the provisions of
37 C.F.R. § 41.50(a)(1), we REMAND this application to the jurisdiction of
the Examiner for actions consistent with our remarks below.
OPINION
A. The Rejection under § 112, ¶ 2
The Examiner finds that the term “diaphragm” recited in claim 21 is
indefinite since it is unclear what portion of the diaphragm is made up by the
woven fabric and what additional structural limitations of the diaphragm are
claimed (Answer 3). With regard to claims 22 and 24, the Examiner finds
that it is unclear what the structures of the loud-speaker and the loud-speaker
diaphragm are (id.). The Examiner finds that neither claim positively recites
structure of the speaker itself or how the diaphragm relates to the speaker
structure (Answer 4).
If one skilled in the art would understand the bounds of the claim
when read in light of the specification, then the claim satisfies the § 112,
second paragraph, definiteness requirement. See Miles Labs., Inc. v.
Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993).
The definiteness of the language employed in a claim must be analyzed, not
in a vacuum, but always in light of the teachings of the prior art and the
particular application disclosure. See In re Angstadt, 537 F.2d 498, 501,
190 USPQ 214, 217 (C.C.P.A. 1976). As correctly argued by Appellants
(Reply Br. 1 and 3-4), the terms “diaphragm” and “loud-speaker” are set
forth and exemplified in the Specification (see Figures 6(A) and 6(B)) and
these terms are relatively common terms that are readily understandable to
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