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 48Page: Previous 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 Next
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