Appeal 2006-1400
Application 10/649,128
limitations, not that which makes it obvious,” and by using “such descriptive
means as words, structures, figures, diagrams, formulas, etc., that set forth the
claimed invention.” Id. (citing Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966).
It is important to note that "[t]he invention is, for purposes of the ‘written
description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564,
19 USPQ2d at 1117.
With regard to the second paragraph requirement for "particularly pointing
out and distinctly claiming the subject matter which the applicant regards as his
invention," it has been stated that the "essence of that requirement is that the
language of the claims must make it clear what subject matter they encompass." In
re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). This has
been frequently stated in a shortened form as a requirement that the claims set forth
the "metes and bounds" of their coverage. See, merely for example, In re Venezia,
530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976); In re Goffe, 526 F.2d 1393,
1397, 188 USPQ 131, 135 (CCPA 1975); In re Watson, 517 F.2d 465, 477, 186
USPQ 11, 20 (CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492 (CCPA 1973). This requirement has usually been viewed from the perspective
of a potential infringer, "so that they may more readily and accurately determine
the boundaries of protection involved and evaluate the possibility of infringement
and dominance." Hammack, 427 F.2d at 1382, 166 USPQ at 208.
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