Appeal No. 97-1163
Application 08/200,044
The rejection of claims 1, 3-7, and 9-14 under 35 U.S.C.
§ 112, first paragraph, is summarily reversed. The examiner
has not made any showing of why the specification is either
(1) without an enabling disclosure for the claimed invention,
(2) without an adequate written description of the claimed
invention, or (3) fails to disclose the best mode as
contemplated by the inventors.
Evidently, the real rejection is under 35 U.S.C. § 112,
second paragraph, for being vague and indefiniteness, which we
also cannot sustain.
It is not the role of claims to explain how the invention
works or how it may be constructed and made to operate. That
is the purpose of the specification. The claims merely define
the metes and bounds or the scope of coverage of the invention
sought to be protected. In our view, the claims clearly
define, in no uncertain terms, what is within their scope and
what is not. While the claims are indeed broad, breadth of
claim should not be confused with indefiniteness. In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971); In
re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
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