2172

2172 Subject Matter Which Applicants Regard as Their Invention

MARLEY MOULDINGS

MOORE

“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

The relevant inquiry under 35 U.S.C. 112(2), in the examination context "is to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis added). "[T]he definiteness of the language employed must be analyzed - not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pretinent art." Id.

Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

PRATER

While claim terms are given their broadest reasonable interpretation during examination, that interpretation must be consistent with the specification. In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).

SOLOMAN

The claim as a whole must be considered to determine whether it apprises one of ordinary skill in the art of its scope, and therefore serves the notice function required by 35 U.S.C. § 112, second paragraph by providing clear warning to others as to what constitutes the infringement of the patent. Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000)(emphasis added).

2172.01 Unclaimed Essential Matter [R-1]

COLLIER

Such a recitation of an act that may occur in the future does not positively recite a structural relationship between the battery and the substrate. See In re Collier, 397 F.2d 1003, 1005 (CCPA 1968).

GOFFE

Moreover, “[f]eatures described as preferred or illustrative in the specification are not critical or essential.” MPEP § 2172.01 (citing In re Goffe, 542 F.2d 564, 567 (CCPA 1976)).