Appeal No. 97-1176
Application 08/003,673
the said openings does not have any significant effect
on the dissolving of the water-erodible water-treatment
composition
as referring to those angularly and vertically spaced openings
initially disposed below the upper surface of the water-erodible
water-treatment composition, i.e., the openings other than those
“open” or “exposed” in the initial state (specification, page 7,
second paragraph).
The 35 U.S.C. § 112, second paragraph, rejection
Considering first the rejection under § 112, the examiner is
of the opinion that
Claim 15 is unclear [because] . . . [t]he meets [sic]
and bounds of the phrases “essentially only” and
“sufficiently small” as applied to the size of the
openings, and the phrase “does not have any significant
effect” as applied to the water treatment composition
dissolution, can not be ascertained from the instant
disclosure. . . . Appellant’s [sic] have not . . .
given a concrete example as to what a person could
expect to practice without conflicting with such claim
language (if patented). [answer, page 4]
The second paragraph of § 112 does not require the metes and
bounds of the invention to be defined exactly, but instead with
only a reasonable degree of precision. See, inter alia, In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976) and In
re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
As the court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
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