Appeal No. 2001-0421
Application 08/926,835
using” claims, the rationale in Erlich and in MPEP § 2173.05(q)
certainly is not applicable to “process of making” claims of the
type before us on this appeal.
In fact, these appealed claims are analogous to the “process
of making” claims involved in Ex parte Bull, 117 USPQ 302 (PTO
Bd. App. 1957), which the Erlich panel considered inapposite
because the claims of Bull “did recite active, positive steps
such as ‘bringing together . . .’” Erlich, 3 USPQ2d at 1017. It
is appropriate to clarify that Bull’s claim recitation “bringing
together . . .” relates to the ingredients of his reaction
mixture without specifying how these ingredients were caused to
be in the reaction mixture. Plainly, this claim recitation is
not conceptually different from the appellants’ claim recitation
of reaction mixture ingredients without specifying how these
ingredients were caused to be in the reaction mixture. It is a
mystery how the majority panel member of this appeal, who
authored the Erlich opinion, could rationally consider the claims
here on appeal to offend the second paragraph of section 112 and
yet consider the conceptually indistinguishable claims of Bull to
comply with this paragraph.
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