Appeal No. 1997-2774
Application No. 08/080,471
As stated in In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970), and reproduced in In re Hyatt, 708
F.2d at 715, 218 USPQ at 197 (footnotes omitted):
The first sentence of the second paragraph of §112
is essentially a requirement for precision and
definiteness of claim language. If the scope of
subject matter embraced by a claim is clear, and if
the applicant has not otherwise indicated that he
intends the claim to be of a different scope, then
the claim does particularly point out and distinctly
claim the subject matter which the applicant regards
as his invention.
This suggests that if the scope of a claim is not clear, then
a rejection under the second paragraph of 35 U.S.C. § 112 is
proper. We have sustained the rejection under the first
paragraph of 35 U.S.C. § 112, as the disclosure is not
commensurate in scope with the subject matter we believe to be
encompassed by the claims. However, we also find the scope of
the claims to be unclear in that we are unable to determine
the metes and bounds of the claims from the language thereof.
The purpose of the second paragraph of § 112 is to
basically insure, with a reasonable degree of particularity,
an adequate notification of the metes and bounds of what is
being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970). When viewed in light of this
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