Appeal No. 96-3130
Application 08/225,653
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 2 is rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the
subject matter that the appellants regard as the invention. For
the reasons stated above with respect to the § 102(e) rejection
of claim 2, considerable speculations and assumptions would be
necessary in order to in fact determine what structure the
appellants intended to be encompassed by the means-plus-function
clause and, therefore, the appellants have failed to set forth
the claimed invention with the requisite precision and
particularity. As our reviewing court stated in In re Donaldson,
16 F.3d at 1195, 29 USPQ2d at 1850:
Although paragraph six statutorily provides
that one may use means-plus-function language
in a claim, one is still subject to the
requirement that a claim "particularly point
out and distinctly claim" the invention.
Therefore, if one employs means-plus-function
language in a claim, one must set forth in
the specification an adequate disclosure
showing what is meant by that language. If
an applicant fails to set forth an adequate
disclosure, the applicant has in effect
failed to particularly point out and
distinctly claim the invention as required by
the second paragraph of section 112.
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