Appeal 2006-3345
Application 10/256,982
INDEFINITENESS REJECTION
Claims 1-8, 13, and 15 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention. Appellants do not contest
the Examiner’s rejection of claims 1, along with dependent claims 2-8, and claim
15 on the basis of typographical errors (Br. 12). As such, we sustain the rejection
of claims 1-8 and 15 for indefiniteness. Pursuant to our authority under 37 C.F.R.
§ 41.50(c), we find that Appellants would overcome this rejection if they amended
claim 1 to delete the language “operable to generate” and amended claim 15 to
replace “said element” (first occurrence) with “an element” and to replace “the
element temperature” with “an element temperature.”
Appellants contend that the metes and bounds of the present invention are
clearly ascertainable from claim 13 as presently written (Br. 12). The Examiner
found that “releasing the sealing bars from the open end of the package after a pre-
determined dwell time” is indefinite because it is unclear whether or not the
package has been sealed after the predetermined dwell time (Answer 6).
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).
Claim 13 further limits claim 9 and adds a step of releasing the sealing bars
after a predetermined amount of time. We find that the scope of the claim would
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