Appeal No. 96-2551
Application 08/037,767
violates the second paragraph of § 112 by claiming more than
appellant regards as his invention. See In re Borkowski, 422 F.2d
904, 909-10, 164 USPQ 642, 645-46 (CCPA 1970):
The examiner's approach to determining whether
appellants' claims satisfy the requirements of § 112
appears to have been to study appellants' disclosure, to
formulate a conclusion as to what he (the examiner)
regards as the broadest invention supported by the
disclosure, and then to determine whether appellants'
claims are broader than the examiner's conception of
what "the invention" is. We cannot agree that § 112
permits of such an approach to claims. The first
sentence of the second paragraph of §112 is essentially
a requirement for precision and definiteness of claim
language. If the scope of subject matter embraced by a
claim is clear, and if the applicant has not otherwise
indicated that he intends the claim to be of a different
scope [footnote 3: "See In re Prater, 56 CCPA 1381, 415
F.2d 1393, 162 USPQ 541 (1969), where the applicant did
indicate an intended scope different from our
interpretation"], then the claim does particularly point
out and distinctly claim the subject matter which the
applicant regards as his invention. [Emphasis in
original.]
As the examiner has not explained why the scope of the claim
language is unclear or why he believes the applicant has indicated
that he intends to limit his claims to pulses having the same
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