Ex parte FORDYCE - Page 7




          Appeal No. 96-2551                                                          
          Application 08/037,767                                                      


          amplitude, the  rejection based on the second paragraph of  112            
          cannot be sustained.2                                                       
                    The examiner also finds fault with claim 1's second               
          "wherein" clause to the extent it recites that "a voltage                   
          magnitude on the first capacitor discharges below the first                 


            If the examiner believes the breadth of the claim language2                                                                      
          is such that it lacks either written description or enabling                
          support, he should have rejected the claim under the first                  
          paragraph of  112 rather than the second.  See Borkowski, 422              
          F.2d at 909, 164 USPQ at 646:                                               
                    [I]f the "enabling" disclosure of a specification is not          
                    commensurate in scope with the subject matter                     
                    encompassed by a claim, that fact does not render the             
                    claim imprecise or indefinite or otherwise not in                 
                    compliance with the second paragraph of  112; rather,            
                    the claim is based on an insufficient disclosure                  
                    [footnote omitted]( 112, first paragraph) and should be          
                    rejected on that ground.  See In re Fuetterer, 50 CCPA            
                    1453, 319 F.2d 259, 138 USPQ 217 (1963); In re Kamal, 55          
                    CCPA 1409, 398 F.2d 867, 158 USPQ 320 (1968); and In re           
                    Wakefield, 164 USPQ [636, 422 F.2d 897 (CCPA 1970)],              
                    decided concurrently herewith.  [Emphasis in original.]           
          See also In re Cormany, 477 F.2d 998, 999-1000, 177 USPQ 450, 451           
          (CCPA 1973) (indefiniteness of claim language and inadequate                
          support for it in the specification are distinct questions under            
          the second and first paragraphs, respectively, of 35 U.S.C.                 
           112); and In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600              
          (CCPA 1971)("Even if it is not true, as appellant asserts, that it          
          is generally understood in the art that omission of temperature             
          from such a recitation indicates that room temperature is intended          
          and the claims are therefor broader than they otherwise would be,           
          breadth is not to be equated with indefiniteness, as we have said           
          many times.").                                                              

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