Appeal No. 2005-0537
Application No. 08/925,985 Page 4
We refer to the brief and reply brief and to the answer for
an exposition of the opposing viewpoints expressed by appellants
and the examiner concerning the issues before us in this appeal.
DECISION
We shall sustain the examiner’s § 112, second paragraph
rejection. In addition, we introduce a new ground of rejection
of claims 26-28 and 32 as failing to comply with the second
paragraph of 35 U.S.C. § 112, on this record. Moreover, since we
can not ascertain the scope of the claims before us on this
record, we procedurally reverse the § 102 and § 103 rejections
advanced by the examiner.2 Our reasoning follows.
A principal purpose of the second paragraph of § 112 is to
provide those who would endeavor, in future enterprises, to
approach the area circumscribed by the claims of a patent, with
adequate notice demanded by due process of law, so that they may
more readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement
and dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970).
2 We emphasize that this reversal is a technical reversal
rather than one based on the merits.
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