Appeal 2005-2547
Application 10/134,817
“The 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); see also Miles Lab.,
Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir.
1993) (If the claims read in light of the specification reasonably apprise
those skilled in the art of the scope of the invention, § 112 demands no
more). “The degree of precision necessary for adequate claims is a function
of the nature of the subject matter.” Id.
With regard to the limitation on the length or width sufficient to allow
swelling as recited in claim 17, the Examiner contends that it is unclear what
length or width is required by the claims (Answer 4). The Examiner points
out that the Specification does not disclose that there is a minimum length or
width below which swelling will not occur (id.).
While the Specification does not recite a minimum length or width,
the lack of such a disclosure is not enough in this case to support a
conclusion of indefiniteness. The Examiner has failed to establish that one
of ordinary skill in the art of horizontal drilling systems and processes would
not understand what lengths and widths would infringe. See All Dental
Prodx, LLC v. Advantage Dental Products, Inc., 309 F.3d 774, 779-80, 64
USPQ2d 1945, 1949 (Fed. Cir. 2002)(“The primary purpose of the
definiteness requirement is to ensure that the claims are written in such a
way that they give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the public, e.g.,
competitors of the patent owner, can determine whether or not they
infringe.). This is because the Specification specifically describes a swelling
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