Appeal No. 1999-0956
Application No. 08/584,084
The examiner’s approach to determining whether
appellants’ claims satisfy the requirements of [the
second paragraph] of § 112 appears to have been to
study appellants’ disclosure, to formulate a conclusion
as to what he (the examiner) regards as the broadest
invention supported by the disclosure, and then to
determine whether appellants’ claims are broader than
the examiner’s conception of what “the invention” is.
We cannot agree that § 112 permits of such an approach
to claims. 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
that claim to be of a different scope, [emphasis added]
then the claim does particularly point out and
distinctly claim the subject matter which the applicant
regards as his invention. [Footnotes deleted.]
In that the examiner has not directed us to anything in
contentions and admissions found, for example, in briefs or
remarks filed by appellants that indicate that the claims do not
correspond to that which appellants regard as their invention,
the examiner’s position is not well founded. See Manual of
Patent Examining Procedure § 2172 (7th ed., Rev. 1, February
2000).
In light of the foregoing, we shall not sustain the
rejection of claims 28-53 under 35 U.S.C. § 112, second
paragraph.
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