Appeal No. 2001-1898
Application No. 08/835,945
The test for compliance with the second paragraph of § 112
is "whether a claim reasonably apprises those of skill in the art
of its scope." In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). We do not consider that claims 55
and 56 meet this test. Claim 55 does not recite that rotation of
the bar is substantially impeded when a sleeve is placed over the
hollow part or pipe (as claim 49 does), but rather that such
rotation is substantially impeded by a sleeve; contrary to
appellants’ argument, supra, this language seems to imply that a
sleeve is present, i.e., is being claimed as part of the
combination. On the other hand, parent claim 52 recites a device
for securing an object to an end of a hollow post or pipe, which
would seem to exclude the combination of the device with a
sleeve. In view of this discrepancy, and the language of claim
55 itself, we do not consider that claim 55 reasonably apprises
one of ordinary skill of its scope, in that it would not be clear
to one of ordinary skill whether or not a sleeve was being
claimed as part of the combination.
The case of In re Stencel, 828 F.2d 751, 4 USPQ2d 1071
(Fed. Cir. 1987), cited in appellants' reply brief, does not
mandate a contrary conclusion. Appellants argue that (reply
brief, page 2):
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