Appeal No. 96-0122
Application No. 08/096,581
performed without looking to appellant’s disclosure for the
specific steps involved in the mathematical calculations. Thus,
we will look to appellant’s disclosure for an understanding of
the steps needed to solve the required calculations of claims 1,
2 and 5. When we turn to appellant’s disclosure for an4
understanding of the calculation steps, the meaning of the
claimed calculations is no longer in doubt, and the claims 5
satisfy the provisions of the second paragraph of 35 U.S.C.
§ 112. The indefiniteness rejection of claims 1, 2 and 5 is
reversed. The non-enablement rejection under the first paragraph
Commission, 75 F.3d 1545, 1557, 37 USPQ2d 1609, 1617 (Fed. Cir.),
cert.denied, 116 S.Ct. 2523 (1996).
4Keeping in mind that appellant has never relied on the
provisions of the sixth paragraph of 35 U.S.C. § 112 or In re
Donaldson, 16 F.3d 1189, 29 USPQ 1845 (Fed. Cir. 1994) to
distinguish the claimed invention over any applied prior art.
5“When the meaning of claims is in doubt . . . they are
properly declared invalid.” Amgen Inc. v. Chugai Pharmaceutical
Co. Ltd., 927 F.2d 1200, 1218, 18 USPQ2d 1016, 1031 (Fed. Cir.
1991).
6
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