Appeal 2007-0909
Application 10/881,407
“produce steam” is the disclosure of transferring heat from “spent fuel 50”
via “heat exchanger 54” to “liquid water 32” to form “steam 34” as
illustrated in Fig. 1, which is the basis for Appellants’ statement that “claim
10 includes” the sole disclosed embodiment (Specification 6: ¶ 0021; Br. 3
and 5). This disclosure involves the flow of the “gas” through the system,
not how the “gas” is “configured to exchange heat.” We fail to find
language in any of dependent claims 11 through 15 which cures this matter.
Appellants do not further state what, in their view, claim 10 further
“includes.” Thus, on this record, Appellants have not carried their burden of
defining the invention in a definite manner. Morris, 127 F.3d at 1055-56, 44
USPQ2d at 1029 (“It is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2.” (statute omitted)).
Therefore, on this record, we determine that when the language of
independent claim 10 and dependent claims 11 through 15 is considered as a
whole as well as in view of the written description in the Specification as it
would be interpreted by one of ordinary skill in the art, the claims in fact fail
to set out and circumscribe a particular area with a reasonable degree of
precision and particularity, see In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), such that “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” See The Beachcombers, Int’l. v. WildeWood Creative Prods.,
31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994) (quoting
Orthokinetics, Inc v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576, 1
USPQ2d 1081, 1088 (Fed. Cir. 1986)); see also In re Warmerdam, 33 F.3d
1354, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
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