Appeal 2007-1067
Application 10/108,793
the claimed subject matter including the nature and reach of the polymer
property limitations must be assessed. Gechter v. Davidson, 116 F.3d 1454,
1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). In so doing, we determine
that the appealed claims run afoul of the definiteness requirements of the
second paragraph of 35 U.S.C. § 112.
Therefore, we are unable to determine the propriety of the Examiner’s
§§ 102(b) and 103(a) rejections. To do so would of necessity require
speculation with regard to the metes and bounds of the claimed subject
matter. In re Wilson, 424, F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970); In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Accordingly, we procedurally reverse the Examiner’s §§ 102 and 103(a)
rejections1 and we enter a new ground of rejection against the claims on
appeal as shown below.
Pursuant to the provisions of 37 C.F.R. § 41.50(b)(2006), claims 1-4,
6, 10-14, and 20-28 are rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the subject matter
which the appellants regard as their invention.
The purpose of the definiteness requirement is:
[T]o provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims of a patent, with
1 As this procedural reversal is not based upon the merits of the
Examiner’s §§ 102(b) and 103(a) rejections, the Examiner may need to
reintroduce these prior art rejections if the claims on appeal are amended to
meet the requirements of the second paragraph of § 112.
4
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