Appeal No. 2006-2742
Application No. 10/115,138
Regarding claim 10, the Examiner asserts that it cannot be
determined what constitutes the response of erasing the unique ID
in the step of erasing the unique ID (answer, page 4).
Appellants argue that the clause Awhich has the generated unique
ID@ clarifies Ae-mail address@ and therefore does not make claim
7 indefinite (brief, page 7). Appellants further argue that
claim 10 is definite since the recited erasing device clearly
erases in response to the memorization taking place at the user
identification/registration-target data memory device (brief,
pages 7-8; reply brief, pages 3-4).
Analysis of 35 U.S.C. ' 112, second paragraph, should begin
with the determination of whether claims set out and circumscribe
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (1971). AThe legal standard for
definiteness is whether a claim reasonably apprises those of
skill in the art of its scope.@ In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
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