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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