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`Case 6:12—cv—00799—JRG Document 144-2 Filed 04/11/14 Page 1 of 31 Page|D #: 4309
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`EXHIBIT A
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`EXHIBIT A
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`Case 6:12-cv-00799-JRG Document 144-2 Filed 04/11/14 Page 2 of 31 PageID #: 4310
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`76 FR 7162
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`Vol. 76, No. 027, Wednesday, February 9, 2011
`Notices
`
`Reporter: 76 FR 7162
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`Federal Register > 2011 > February > Wednesday, February 9, 2011 > Notices
`> DEPARTMENT OF COMMERCE (DOC) -- United States Patent and Trademark
`Office (USPTO)
`
`Title: Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C.
`112 and for Treatment of Related Issues in Patent Applications
`
`Action: Notice.
`
`Agency
`
`DEPARTMENT OF COMMERCE (DOC) > United States Patent and Trademark Office
`(USPTO)
`Identifier: [Docket No.: PTO-P-2010-0088]
`
`Synopsis
`
`SUMMARY: These supplementary guidelines are intended to assist United States Patent and
`Trademark Office (Office) personnel in the examination of claims in patent applications for
`compliance with 35 U.S.C. 112, second paragraph, which requires that claims particularly point out
`and distinctly claim the subject matter that applicant regards as his or her invention. In addition,
`supplemental information is provided to assist Office personnel in the examination of claims
`that contain functional language for compliance with 35 U.S.C. 112, especially
`computer-implemented invention claims. The guidelines also include information to assist Office
`personnel in the examination of dependent claims for compliance with 35 U.S.C. 112, fourth
`[*7163] paragraph. The guidelines are a supplement to the current provisions in the Manual of
`Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. 112, and the current provisions
`in the MPEP pertaining to 35 U.S.C. 112 remain in effect except as where indicated in these
`guidelines.
`
`Text
`
`SUPPLEMENTARY INFORMATION: These guidelines are intended to assist Office personnel
`in the examination of claims for compliance with 35 U.S.C. 112, [paragraph] 2 (§ 112,
`[paragraph] 2), which requires that claims particularly point out and distinctly claim the subject
`matter that applicant regards as his or her invention. In addition, supplemental information is
`provided to assist Office personnel in the examination of claims that contain functional language
`for compliance with 35 U.S.C. 112, especially computer-implemented invention claims. The
`guidelines also include information to assist Office personnel in the examination of dependent
`claims for compliance with 35 U.S.C. 112, [paragraph] 4 (§ 112, [paragraph] 4). The guidelines
`and supplemental information are based on the Office’s current understanding of the law and
`are believed to be fully consistent with the binding precedent of the U.S. Supreme Court, the U.S.
`Court of Appeals for the Federal Circuit (Federal Circuit) and its predecessor courts.
`
`These guidelines and supplemental information do not constitute substantive rule making and
`hence do not have the force and effect of law. They have been developed as a matter of internal
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`Office management and are not intended to create any right or benefit, substantive or procedural,
`enforceable by any party against the Office. Rejections will continue to be based upon the
`substantive law, and it is these rejections that are appealable. Consequently, any failure by Office
`personnel to follow the guidelines and supplemental information is neither appealable nor
`petitionable.
`
`These guidelines and supplemental information merely update USPTO examination practice for
`consistency with the USPTO’s current understanding of the case law regarding the requirements of
`35 U.S.C. 112. Therefore, these guidelines and supplemental information relate only to
`interpretative rules, general statements of policy, or rules of agency organization, procedure, or
`practice. The USPTO is providing this opportunity for public comment because the USPTO desires
`the benefit of public comment on these guidelines and supplemental information; however,
`notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any
`other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that
`5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice and comment rule making
`for ″ interpretative rules, general statements of policy, or rules of agency organization, procedure,
`or practice.’″ (quoting 5 U.S.C. 553(b)(A))). Persons submitting written comments should note
`that the USPTO may not provide a ″comment and response″ analysis of such comments as notice
`and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other
`law.
`
`Part 1: Examination Guidelines for Ensuring Compliance With 35 U.S.C. 112, Second
`Paragraph--Definite Claim Language
`
`I. Background: Optimizing patent quality by providing clear notice to the public of the boundaries
`of the inventive subject matter protected by a patent grant fosters innovation and competitiveness.
`Accordingly, providing high quality patents is one of the agency’s guiding principles. The
`Office recognizes that issuing patents with clear and definite claim language is a key component
`to enhancing the quality of patents and raising confidence in the patent process.
`
`As part of the ongoing efforts to enhance patent quality and continually improve patent examination,
`the Office is issuing clarifying guidelines on examination of claims under § 112, [paragraph] 2.
`This statutory section requires that a patent application specification shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject matter which the applicant
`regards as his or her invention. In patent examining parlance, the claim language must be ″definite″
`to comply with § 112, [paragraph] 2. Conversely, a claim that does not comply with this
`requirement of § 112, [paragraph] 2 is ″indefinite.″
`
`It is of utmost importance that patents issue with definite claims that clearly and precisely
`inform persons skilled in the art of the boundaries of protected subject matter. Therefore, claims
`that do not meet this standard must be rejected under § 112, [paragraph] 2 as indefinite. Such
`a rejection requires that the applicant respond by explaining why the language is definite or by
`amending the claim, thus making the record clear regarding the claim boundaries prior to issuance.
`As an indefiniteness rejection requires the applicant to respond by explaining why the language
`is definite or by amending the claim, such rejections must clearly identify the language that causes
`the claim to be indefinite and thoroughly explain the reasoning for the rejection.
`
`These guidelines set forth the examining procedure for making such determinations and focus on
`several key aspects of examining claims under § 112, [paragraph] 2. The guidelines are a first
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`step toward providing additional examination guidance in this area and may be supplemented in
`later stages to address further topics relating to definite claim language. This document is not a
`comprehensive revision of the MPEP. However, it is anticipated that the MPEP will be updated
`based on a final version of these guidelines, and [*7164]
`those sections of the MPEP directly
`affected by these guidelines are referenced therein. The current provisions in the MPEP that
`are consistent with these guidelines remain in effect.
`
`II. Step 1--Interpreting the Claims
`
`A. Broadest Reasonable Interpretation: The first step to examining a claim to determine if the
`language is definite is to fully understand the subject matter of the invention disclosed in the
`application and to ascertain the boundaries of that subject matter encompassed by the claim. During
`examination, a claim must be given its broadest reasonable interpretation consistent with the
`specification as it would be interpreted by one of ordinary skill in the art. Because the applicant
`has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable
`interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly
`than is justified.<1> The focus of the inquiry regarding the meaning of a claim should be what
`would be reasonable from the perspective of one of ordinary skill in the art.<2> See MPEP § 2111
`for a full discussion of broadest reasonable interpretation.
`
`Under a broadest reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification. The plain meaning of a
`term means the ordinary and customary meaning given to the term by those of ordinary skill in
`the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced
`by a variety of sources, including the words of the claims themselves, the specification, drawings,
`and prior art. However, the best source for determining the meaning of a claim term is the
`specification--the greatest clarity is obtained when the specification serves as a glossary for the
`claim terms. The presumption that a term is given its ordinary and customary meaning may be
`rebutted by the applicant by clearly setting forth a different definition of the term in the
`specification.<3> When the specification sets a clear path to the claim language, the scope of the
`claims is more easily determined and the public notice function of the claims is best served.
`See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
`
`B. Claims Under Examination Are Evaluated With a Different Standard Than Patented Claims to
`Determine Whether the Language Is Definite: Patented claims enjoy a presumption of validity
`and are not given the broadest reasonable interpretation during court proceedings involving
`infringement and validity, and can be interpreted based on a fully developed prosecution record.
`Accordingly, when possible, courts construe patented claims in favor of finding a valid
`interpretation. A court will not find a patented claim indefinite unless it is ″insolubly ambiguous.″
`<4> In other words, the validity of a claim will be preserved if some meaning can be gleaned
`from the language.
`
`In contrast, no presumption of validity attaches before the issuance of a patent. The Office is not
`required or even permitted to interpret claims when examining patent applications in the same
`manner as the courts, which, post-issuance, operate under the presumption of validity.<5> The
`Office must construe claims in the broadest reasonable manner during prosecution in an effort to
`establish a clear record of what applicant intends to claim. In deciding whether a pending
`claim particularly points out and distinctly claims the subject matter, a lower threshold of ambiguity
`is applied during prosecution.<6> The lower threshold is applied because the patent record is in
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`development and not fixed. As such, applicant has the ability to provide explanation and/or
`amend the claims to ensure that the meaning of the language is clear and definite prior to
`issuance.<7>
`
`During examination, after applying the broadest reasonable interpretation to the claim, if the
`metes and bounds of the claimed invention are not clear, the claim is indefinite and should be
`rejected.<8> For example, if the language of a claim, given its broadest reasonable interpretation,
`is such that a person of ordinary skill in the relevant art would read it with more than one
`reasonable interpretation, then a rejection under § 112, [paragraph] 2 is appropriate.<9> Examiners,
`however, are cautioned against confusing claim breadth with claim indefiniteness. A broad
`claim is not indefinite merely because it encompasses a wide scope of subject matter provided
`the scope is clearly defined. Instead, a claim is indefinite when the boundaries of the protected
`subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that
`covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise
`clear. But a genus claim that could be interpreted in such a way that it is not clear which species
`are covered would be indefinite (e.g., because there is more than one reasonable interpretation
`of what species are included in the claim). See PART 1, section III.A.4. (below), for more
`information regarding the determination of whether a Markush claim satisfies the requirements of
`§ 112, [paragraph] 2.
`
`C. Determine Whether Each Claim Limitation Invokes 35 U.S.C. 112, [paragraph] 6 or Not: As
`part of the claim interpretation analysis, examiners should determine whether each limitation
`invokes 35 U.S.C. 112, [paragraph] 6 (112, [paragraph] 6) or not. If the claim limitation
`invokes 112, [paragraph] 6, the claim limitation must ″be construed to cover the corresponding
`structure, material, or acts described in the specification and equivalents thereof.″ <10> See PART
`1, section III.C. (below), for more information regarding the determination of whether a
`limitation invokes 112, [paragraph] 6, and means-plus-function claim limitations.
`
`III. Step 2--Determining Whether Claim Language Is Definite: During prosecution, applicant has
`an opportunity and a duty to amend ambiguous claims to clearly and precisely define the
`metes and bounds of the claimed invention. The claim places the public on notice of the scope
`of the patentee’s right to exclude.<11> As the Federal Circuit stated in Halliburton Energy Services:
`
`We note that the patent drafter is in the best position to resolve the ambiguity in the patent
`claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate
`circumstances so that the patent can be amended during prosecution rather than attempting to
`resolve the ambiguity in litigation.<12>
`
`A decision on whether a claim is indefinite under § 112, [paragraph] 2 requires a determination
`of whether those skilled in the art would understand what is claimed when the claim is read in light
`of the specification.<13> Claim terms are typically given their ordinary and customary meaning
`as understood by one of ordinary skill in the pertinent art, and the generally understood meaning of
`particular terms may vary from art to art. Therefore, it is important to analyze claim terms in
`view of the application’s specification from the perspective of those skilled in the relevant art since
`a particular term used in one patent or application may not have the same meaning when used
`in a different application.<14>
`
`The following sections highlight certain areas in which questions of definiteness commonly
`arise.
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`A. Indeterminate Terms
`
`1. Functional Claiming: A claim term is functional when it recites a feature ″by what it does
`rather than by what it is.″ <15> There is nothing intrinsically wrong with the use of such claim
`language.<16> In fact, § 112, [paragraph] 6, expressly authorizes a form of functional claiming
`[*7165] (means-plus-function claim limitations discussed in III.C. below). Functional language
`may also be employed to limit the claims without using the means-plus-function format.<17>
`Unlike means-plus-function claim language that applies only to purely functional limitations,<18>
`functional claiming often involves the recitation of some structure followed by its function. For
`example, in In re Schreiber, the claims were directed to a conical spout (the structure) that
`″allow[ed] several kernels of popped popcorn to pass through at the same time″ (the function).<19>
`As noted by the court in Schreiber, ″[a] patent applicant is free to recite features of an apparatus
`either structurally or functionally.″ <20>
`
`Notwithstanding the permissible instances, the use of functional language in a claim may fail ″to
`provide a clear-cut indication of the scope of the subject matter embraced by the claim″ and
`thus be indefinite.<21> For example, when claims merely recite a description of a problem to be
`solved or a function or result achieved by the invention, the boundaries of the claim scope may
`be unclear.<22> Further, without reciting the particular structure, materials or steps that accomplish
`the function or achieve the result, all means or methods of resolving the problem may be
`encompassed by the claim.<23> Unlimited functional claim limitations that extend to all means
`or methods of resolving a problem may not be adequately supported by the written description or
`may not be commensurate in scope with the enabling disclosure,<24> both of which are
`required by § 112, [paragraph] 1.<25> For instance, a single means claim covering every
`conceivable means for achieving the stated result was held to be invalid under § 112, [paragraph]
`1 because the court recognized that the specification, which disclosed only those means known
`to the inventor, was not commensurate in scope with the claim.<26> For more information regarding
`the written description requirement and enablement requirement under § 112, [paragraph] 1, See
`MPEP §§ 2161-2164.08(c) and PART 2, sections I and II (below).
`
`When a claim limitation employs functional language, the examiner’s determination of whether
`the limitation is sufficiently definite will be highly dependent on context (e.g., the disclosure in the
`specification and the knowledge of a person of ordinary skill in the art).<27> For example, a
`claim that included the term ″fragile gel″ was found to be indefinite because the definition of the
`term in the specification was functional, i.e., the fluid is defined by what it does rather than
`what it is (″ability of the fluid to transition quickly from gel to liquid, and the ability of the fluid
`to suspend drill cuttings at rest″), and it was ambiguous as to the requisite degree of the
`fragileness of the gel, the ability of the gel to suspend drill cuttings (i.e., gel strength), and/or
`some combination of the two.<28> In another example, the claims directed to a tungsten filament
`for electric incandescent lamps were held invalid for including a limitation that recited
`″comparatively large grains of such size and contour as to prevent substantial sagging or offsetting
`during a normal or commercially useful life for such a lamp or other device.″ <29> The court
`observed that the prior art filaments also ″consisted of comparatively large crystals″ but they were
`″subject to offsetting″ or shifting, and the court further found that the phrase ″of such size and
`contour as to prevent substantial sagging and offsetting during a normal or commercially useful life
`for a lamp or other device″ did not adequately define the structural characteristics of the grains
`(e.g., the size and contour) to distinguish the claimed invention from the prior art.<30> Similarly,
`a claim was held invalid because it recited ″sustantially (sic) pure carbon black in the form of
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`commercially uniform, comparatively small, rounded smooth aggregates having a spongy or
`porous exterior.″ <31> In the latter example, the Court observed various problems with the
`limitation: ″commercially uniform″ meant only the degree of uniformity buyers desired;
`″comparatively small″ did not add anything because no standard for comparison was given; and
`″spongy″ and ″porous″ are synonyms that the Court found unhelpful in distinguishing the claimed
`invention from the prior art.<32>
`
`In comparison, a claim limitation reciting ″transparent to infrared rays″ was held to be definite
`because the specification showed that a substantial amount of infrared radiation was always
`transmitted even though the degree of transparency varied depending on certain factors.<33>
`Likewise, the claims in another case were held definite because applicant provided ″a general
`guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether
`a process uses a silicon dioxide source ’essentially free of alkali metal’ to make a reaction
`mixture ’essentially free of alkali metal’ to produce a zeolitic compound ’essentially free of
`alkali metal.’ ″ <34>
`
`Examiners should consider the following factors when examining claims that contain functional
`language to determine whether the language is ambiguous: (1) Whether there is a clear cut indication
`of the scope of the subject matter covered by the claim; (2) whether the language sets forth
`well-defined boundaries of the invention or only states a problem solved or a result obtained;
`and (3) whether one of ordinary skill in the art would know from the claim terms what structure
`or steps are encompassed by the claim. These factors are examples of points to be considered
`when determining whether language is ambiguous and are not intended to be all inclusive or
`limiting. Other factors may be more relevant for particular arts. The primary inquiry is whether the
`language leaves room for ambiguity or whether the boundaries are clear and precise.
`
`During prosecution, applicant may resolve the ambiguities of a functional limitation in a number
`of ways. For example: (1) ″The ambiguity might be resolved by using a quantitative metric
`(e.g., numeric limitation as to a physical property) rather than a qualitative functional feature;″
`<35> (2) applicant could demonstrate that the ″specification provide[s] a formula for calculating
`a property along with examples that meet the claim limitation and examples that do not;″
`<36> (3) applicant could demonstrate that the specification provides a general guideline and
`examples sufficient to teach a person skilled in the art when the claim limitation was satisfied;
`<37> or (4) applicant could amend the claims to recite the particular structure that accomplishes
`the function.
`
`2. Terms of Degree: When a term of degree is used in the claim, the examiner should determine
`whether the specification provides some standard for measuring that degree.<38> If the
`specification does not provide some standard for measuring that degree, a determination must be
`made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of
`the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of
`degree).<39> The claim is not indefinite if the specification provides examples or teachings
`that can be used to measure a degree even without a precise numerical measurement (e.g., a figure
`that provides a standard for measuring the meaning of the term of degree).<40> During
`prosecution, an applicant may also overcome an indefiniteness rejection by submitting a declaration
`under 37 CFR 1.132 showing examples that meet the claim limitation and examples that do
`not.<41>
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`3. Subjective Terms: When a subjective term is used in the claim, the examiner should determine
`whether the specification supplies some standard for [*7166] measuring the scope of the
`term, similar to the analysis for a term of degree. Some objective standard must be provided in
`order to allow the public to determine the scope of the claim. A claim that requires the exercise of
`subjective judgment without restriction may render the claim indefinite.<42> Claim scope
`cannot depend solely on the unrestrained, subjective opinion of a particular individual purported
`to be practicing the invention.<43>
`
`For example, in Datamize, the invention was directed to a computer interface screen with an
`″aesthetically pleasing look and feel.″ <44> The meaning of the term ″aesthetically pleasing″
`depended solely on the subjective opinion of the person selecting features to be included on the
`interface screen. Nothing in the intrinsic evidence (e.g., the specification) provided any guidance as
`to what design choices would result in an ″aesthetically pleasing″ look and feel.<45> The
`claims were held indefinite because the interface screen may be ″aesthetically pleasing″ to one
`user but not to another.<46>
`
`During prosecution, the applicant may overcome a rejection by providing evidence that the
`meaning of the term can be ascertained by one of ordinary skill in the art when reading the
`disclosure, or by amending the claim to remove the subjective term.
`
`4. Markush Groups: A ″Markush″ claim recites a list of alternatively useable species.<47> A
`Markush claim is commonly formatted as: ″selected from the group consisting of A, B, and C;″
`however, the phrase ″Markush claim″ as used in these guidelines means any claim that recites a list
`of alternatively useable species regardless of format. A Markush claim may encompass a large
`number of alternative species, but is not necessarily indefinite under § 112, [paragraph] 2 for such
`breadth.<48> In certain circumstances, however, a Markush group may be so expansive that
`persons skilled in the art cannot determine the metes and bounds of the claimed invention. For
`example, a Markush group that encompasses a massive number of distinct alternative species may
`be indefinite under § 112, [paragraph] 2 if one skilled in the art cannot determine the metes
`and bounds of the claim due to an inability to envision all of the members of the Markush group.
`In such a circumstance, an examiner may reject the claim for indefiniteness under § 112,
`[paragraph] 2.
`
`In addition, a Markush claim may be rejected under the judicially approved ″improper Markush
`grouping″ doctrine when the claim contains an improper grouping of alternatively useable
`species.<49> A Markush claim contains an ″improper Markush grouping″ if: (1) The species of
`the Markush group do not share a ″single structural similarity,″ <50> or (2) the species do not share
`a common use. Members of a Markush group share a ″single structural similarity″ when they
`belong to the same recognized physical or chemical class or to the same art-recognized class.
`Members of a Markush group share a common use when they are disclosed in the specification or
`known in the art to be functionally equivalent.<51> When an examiner determines that the
`species of a Markush group do not share a single structural similarity or do not share a common
`use, then a rejection on the basis that the claim contains an ″improper Markush grouping″ is
`appropriate. The examiner should maintain the rejection of the claim on the basis that the claim
`contains an ″improper Markush grouping″ until the claim is amended to include only the species that
`share a single structural similarity and a common use, or the applicant presents a sufficient
`showing that the species in fact share a single structural similarity and a common use.
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`Under principles of compact prosecution, the examiner should also require the applicant to elect
`a species or group of indistinct species for search and examination (i.e., an election of
`species).<52> If the examiner does not find the species or group of indistinct species in the prior
`art, then the examiner should extend the search to those additional species that fall within the
`scope of a permissible Markush claim. In other words, the examiner should extend the search to
`the species that share a single structural similarity and a common use. The improper Markush
`claim should be examined for patentability over the prior art with respect to the elected species
`or group of indistinct species, as well as the species that share a single structural similarity and a
`common use with the elected species or group of indistinct species (i.e., the species that would
`fall within the scope of a proper Markush claim). The examiner should also reject the claim under
`§ 112, [paragraph] 2 as indefinite if appropriate.
`
`Depending upon the circumstances of an application, it may be appropriate to reject a Markush
`claim under § 112, [paragraph] 2 as indefinite (if one skilled in the art cannot determine the metes
`and bounds of the Markush claim due to an inability to envision all of the members of the
`Markush), or under the ″improper Markush grouping″ doctrine (if the species of a Markush group
`do not share a single structural similarity or a common use). Alternatively, it may be appropriate
`to reject a Markush claim under both § 112, [paragraph] 2 and the ″improper Markush grouping″
`doctrine.
`
`5. Dependent Claims: When examining a dependent claim, the examiner should also determine
`whether the claim complies with § 112, [paragraph] 4, which requires that dependent claims contain
`a reference to a previous claim in the same application, specify a further limitation of the
`subject matter claimed, and necessarily include all the limitations of the previous claim.<53> If
`the dependent claim does not comply with the requirements of § 112, [paragraph] 4, the examiner
`should reject the dependent claim under § 112, [paragraph] 4 as unpatentable rather than
`objecting to the claim.<54> Although the requirements of § 112, [paragraph] 4 are related to
`matters of form, non-compliance with § 112, [paragraph] 4 renders the claim unpatentable just as
`non-compliance with other paragraphs of § 112 would.<55> For example, a dependent claim
`must be rejected under § 112, [paragraph] 4 if it omits an element from the claim upon which it
`depends <56> or it fails to add a limitation to the claim upon which it depends.<57>
`
`B. Correspondence Between Specification and Claims: The specification should ideally serve as
`a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning
`of the claim terms. Correspondence between the specification and claims is required by 37
`CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in
`the specification so that the meaning of the terms may be ascertainable by reference to the
`specification. To meet the definiteness requirement under § 112, [paragraph] 2, the exact claim
`terms are not required to be used in the specification as long as the specification provides the needed
`guidance on the meaning of the terms (e.g., by using clearly equivalent terms) so that the
`meaning of the terms is readily discernable to a person of ordinary skill in the art.<58> Nevertheless,
`glossaries of terms used in the claims are a helpful device for ensuring adequate definition of
`terms used in claims. Express definitions of claim terms can eliminate the need for any
`″time-consuming and difficult
`inquiry into indefiniteness.″ <59> Therefore, applicants are
`encouraged to use glossaries as a best practice in patent application preparation. If the specification
`does not provide the needed support or antecedent basis for the claim terms, the specification
`should be objected to under 37 CFR 1.75(d)(1).<60> Applicant will be required to make appropriate
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`amendment to the description to provide clear support or [*7167] antecedent basis for the
`claim terms provided no new matter is introduced, or amend the claim.
`
`A claim, although clear on its face, may also be indefinite when a conflict or inconsistency
`between the claimed subject matter and the specification disclosure renders the scope of the claim
`uncertain.<61> For example, a claim with a limitation of ″the clamp means including a clamp
`body and first and second clamping members, the clamping members being supported by the clamp
`body″ was determined to be indefinite because the terms ″first and second clamping members″
`and ″clamp body″ were found to be vague in light of the specification which showed no ″clamp
`member″ structure being ″supported by the clamp body.″ <62> In another example, a claim
`was directed to a process of treating an aluminum surface with an alkali silicate solution and
`included a further limitation that the surface has an ″opaque″ appearance.<63> The specification,
`meanwhile, associated the use of an alkali silicate with a glazed or porcelain-like finish, which
`the specification distinguished from an opaque finish.<64> Noting that no claim may be read apart
`from and independent of the supporting disclosure on which it is based, the court found that
`the claim was internally inconsistent b