Ex parte FORDYCE - Page 6




          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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