Appeal 2007-0003
Application 10/217,990
guidance presented in the Specification. See, e.g., In re Wands, 858 F.2d
731, 735-37, 8 USPQ2d 1400, 1402-04 (Fed. Cir. 1988).
Accordingly, we are constrained to reverse the Examiner’s 35 U.S.C.
§ 112, first paragraph, rejection of claims 22, 23, 26, 27, and 30-32 as
lacking an enabling disclosure for the subject matter presently claimed.
II. Claims 1-18 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
The first issue presented is: Has the Examiner established that the
subject matter of claims 1-16 does not meet the requirements of 35 U.S.C.
§ 112, second paragraph? We answer this question in the negative.
The Examiner contends that the subject matter of claims 1-16 is
indefinite in scope because “[i]t is not clear from the claims what structural
elements of the claimed device would ensure the proper transmission [of
electromagnetic energy].” (Answer 4).
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] 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). The inquiry is to determine whether the claim sets
out and circumscribes a particular area with a reasonable degree of precision
and particularity. The definiteness of the language employed in a claim
must be analyzed not in a vacuum, but in light of the teachings of the
particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
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