2174

2174 Relationship Between the Requirements of the First and Second Paragraphs of 35 U.S.C. 112

BORKOWSKI

PPG

The definiteness requirement of 35 U.S.C. § 112, ¶ 2, “is essentially a requirement for precision and definiteness of claim language.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1562, (Fed. Cir. 1996) (quoting In re Borkowski, 422 F.2d 904, 909 (CCPA 1970).

Appellant argues that "[i]f a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim," then "that fact alone" does not render the claim indefinite. App. Br. 11, citing In re Borkowski, 422 F.2d 904, 909 (CCPA 1970). We agree with Appellant, as here the language of the claim is not indefinite. The Examiner identifies a problem in what the Specification teaches, which is separate from whether the claim is indefinite.