Appeal No. 97-1626
Application 08/299,123
21 (CCPA 1931) (“We are clear that the manual drawing away of
the glass from the device by Wilcox did not constitute a means
for guiding away the glass called for in the counts in
question and in the specifications of the parties.”) Compare
In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA
1969) (a human being is not the equivalent of a machine).
In light of the foregoing, appellants’ disclosure fails
to provide descriptive support as required by 35 U.S.C. § 112,
first paragraph, for the “first means for transferring” and
the “second means for transferring” limitations added to claim
1 during prosecution.
Claims 1, 3-7, 9 and 10 are further rejected under 35
U.S.C. § 112, second paragraph, for failing to particularly
point out and distinctly claim the subject matter which
appellants regard as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
The purpose of the requirement found in the second paragraph
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