Appeal 2007-0694
Reexamination Control 90/006,433
Patent 5,428,933
the walls of two adjacent recesses.
The Examiner states that:
The claimed language of each projection and each recess
comprising opposed walls . . . . at least one projection also
defining walls of two adjacent recesses is confusing. Applicant
initially claims the recesses having walls, and then later claims
the walls do not belong to the recesses, but to the projections.
The claim is thus indefinite.
(Answer, pages 3-4). Patentee disagrees. (Appeal Br. at 50 and Reply Br.
at 8-9).
A claim is indefinite if, when read in light of the specification, it does
not reasonably apprize those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65
USPQ2d 1385, 1406 (Fed. Cir. 2003). Specifically, if the scope of the
invention sought to be patented cannot be determined from the language of
the claims, the specification or the teachings of the prior art with a
reasonable degree of certainty, a rejection of the claims under 35 U.S.C. §
112, second paragraph is appropriate. In re Wiggins, 488 F.2d 538, 541, 179
USPQ 421, 423 (CCPA 1973).
The Examiner fails to demonstrate that one skilled in the art would
fail to understand that the walls of a projection may be used to define the
walls of a recess or vice versa. We reverse the Examiner’s rejection of claim
30 as indefinite as the Examiner has failed to demonstrate that one skilled in
the art would fail to be apprized of the scope claimed by Patentee.
2. Rejection of Claim 30 as Lacking Enablement
Both the Final Rejection and the Examiner’s Answer state that claim
48
Page: Previous 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 Next
Last modified: September 9, 2013