Appeal No. 2001-0421
Application 08/926,835
In Allen Engineering, supra, the court stated:
We are simply tasked with determining whether the
claims “particularly point[ ] out and distinctly
claim[ ]” what the inventor regards as his
invention. 35 U.S.C. §112, paragraph 2; see also
In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320,
1322(Fed. Cir. 1989) (holding that claims failing
this test during prosecution must be rejected
under §112, paragraph 2). Moreover, it is of no
moment that the contradiction is obvious: semantic
indefiniteness of claims “is not rendered
unobjectionable merely because it could have been
corrected.” In re Hammack, 427 F.2d 1384, 1388
n.5, 166 USPQ 209, 215n.5 (CCPA 1970).
We have performed that task and determined the claims on appeal
are indefinite. In our view, the best course of action is to
raise this issue in the context of a new ground of rejection
under the provisions of 37 CFR § 1.196(b). Contrary to the views
of our colleague, our actions today will provide a forum for
appellants and the examiner to expeditiously close prosecution of
the case, at least on the record before us.
This is seen in that appellants argue in this appeal that
“additional use of an acid in the context of this invention means
an aqueous acidic solution.” Making arguments in an appeal
proceeding on the basis of “the context of this invention”
instead of the actual claim language used is unhelpful in
resolving the patentability issues since patentability is
premised upon the claims not an “invention.” In similar manner,
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