Appeal 2007-0368
Application 10/178,127
positioning of the loop is actually required by the claim. Also, it is not clear who
the claim encompasses as doing the intending.
For the above reasons the subject matter circumscribed by the Appellants’
claims cannot be determined with a reasonable degree of precision and
particularity. Consequently, the Appellants’ claims do not comply with the
definiteness requirement of 35 U.S.C. § 35 U.S.C. § 112, second paragraph. See In
re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Accordingly,
claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph.1
In some instances it may be impossible to determine whether or not claimed
subject matter is anticipated by or would have been obvious over references
because the claims are so indefinite that considerable speculation and assumptions
would be required regarding the meaning of terms employed in the claims with
respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962). In other instances, however, it is possible to make a
reasonable, conditional interpretation of claims adequate for the purpose of
resolving patentability issues to avoid piecemeal appellate review. In the interest
of administrative and judicial economy, this course is appropriate wherever
1 Because the Appellants’ claims fail to comply with the definiteness requirement
of 35 U.S.C. § 35 U.S.C. § 112, second paragraph, we do not reach the issue of
whether the claims comply with the 35 U.S.C. § 112, first paragraph, written
description requirement. See Moore, 439 F.2d at 1235, 169 USPQ at 238 (“Once
having determined that the subject matter defined by the claims is particular and
definite, the analysis then turns to the first paragraph of section 112 to determine
whether the scope of protection sought is supported and justified by the
specification disclosure.”).
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