Appeal No. 95-1955
Application 08/109,982
In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA
1977).
The only reason articulated by the examiner in support of
the indefiniteness rejection under 35 U.S.C. § 112, second
paragraph, is that the claims as recited are without adequate
written description in the specification under 35 U.S.C. § 112,
first paragraph. See examiner's answer at page 3.
Even assuming that the claims are without written
description support in the specification, that does not establish
that the appellant has failed to particularly point out the
subject matter which she regards as the invention. The examiner
does not assert and has no reasonable basis to assert that one
with ordinary skill in the art, upon reading the claims, would
not know the scope of the claimed invention or what has been
claimed. The written description requirement of 35 U.S.C. § 112,
first paragraph, and the definiteness requirement of 35 U.S.C.
§ 112, second paragraph, have entirely different purposes and are
independent of each other. In any event, we have also found
above that the rejection of claims 10-12 under 35 U.S.C. § 112,
first paragraph, as being without adequate written description
support in the specification cannot be sustained.
Accordingly, we do not sustain the rejection of claims 10-12
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