Appeal No. 97-0707
Application No. 08/001,474
not our duty to explain the invention where appellant has failed
to do so. More importantly, we do not know the metes and bounds
of the claim in view of the questioned language. If the prior
art rejection of this claim had not been reversed because of its
dependency from claim 9, then we would have had to resort to
speculation and assumptions to apply the prior art to the
limitations of the claim. See In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295 (CCPA 1962).
REJECTIONS UNDER 37 CFR § 1.196(b)
Pursuant to the provisions of 37 CFR § 1.196(b), we hereby
enter the following new grounds of rejection:
Claim 11 is rejected under the first and second paragraphs
of 35 U.S.C. § 112. As indicated supra, the originally filed
application disclosure does not provide an enabling disclosure
for a tree adder that can add outputs in “logarithm time units.”
In view of the lack of any explanation in the application
disclosure for such an addition operation, the claim is
indefinite because it fails to set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure.
See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
9
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