Appeal No. 96-0139
Application 08/037,683
reasoning does not support a rejection under the second
paragraph of § 112. Under that paragraph, an applicant may
claim what he regards as his invention as broadly as he
wishes, provided the claim is not ambiguous; the question of
whether the claimed subject matter is enabled by the
application disclosure is an issue under the first paragraph
of § 112. See In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970):
The first sentence of the second paragraph of §112 is
essentially a requirement for precision and definiteness
of claim language. If the scope of subject matter
embraced by a claim is clear, and if the applicant has
not otherwise indicated that he intends the claim to be
of a different scope, then the claim does particularly
point out and distinctly claim the subject matter which
the applicant regards as his invention. That is to say,
if 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 (§ 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. [Footnotes
omitted; 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
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