Appeal No. 97-0922
Application 08/314,281
that language. If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly
point out and distinctly claim the invention as required by
the second paragraph of 35 U.S.C. 112. In re Donaldson, 16
F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994). Also
see In re Dossel, 115 F.3d 942, , 42 USPQ2d 1881, (Fed.
Cir. 1997). However, in the instant case, in view of
the state of the filter art, we find that the artisan would
have understood the filter 20 of the instant invention to be a
computer for running the claimed algorithm and that it then
becomes clear that the "means for selecting an order z of said
filter" would be any means for inputting that value into the
computer.
While we have found for appellant in this case, we
note, in passing, that we find appellant's arguments to have
been unpersuasive in reaching our decision. Appellant alleges
that the examiner apparently believes "that claims and drawing
figures must, necessarily, be co-extensive in scope" [brief-
page 5]. However, we do not understand the examiner to have
been asserting such. Rather, the examiner was merely
questioning the metes and bounds of the claimed invention in
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