Appeal No. 2006-2280 Page 5
Application No. 10/244,011
OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.
I. Rejection under 35 U.S.C. § 112, second paragraph
The examiner rejected claims 1-14 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the appellant regards as the invention. In particular,
the examiner found that a portion in claim 1, which recites that the length of the
tube is substantially less than the length of the crutch strut or cane shaft, is vague
and indefinite because the cane and crutch are unclaimed articles, which makes the
metes and bounds of the claim unclear. Answer, p. 3.
The appellant argues that the scope of the claim is clear, because the
preamble recites that both the crutch strut and cane shaft have selected lengths. As
such, the appellant argues that the crutch and cane are preexisting structures to
which the inventive structure is applied. Brief, p. 11.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the claim
is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986) (citations
omitted). In this case, we hold that the claim language that recites the length of the
tube is substantially less than the length of the crutch strut or cane shaft is not
unclear. We find that one skilled in the art would understand that the limitation
depends on the length of the cane or crutch to which the support is attached, and
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