Appeal No. 97-1626
Application 08/299,123
Failure to describe adequately the necessary
structure, materials, or acts in the written
description means that the drafter has failed to
comply with the mandate of § 112 ¶ 2 . . . the
mandate that all claims must particularly point out
and distinctly claim the subject matter which the
applicant regards as his invention.
Such is the case here, in our view. Accordingly, the
claims do not comply with the second paragraph of 35 U.S.C. §
112.
In summary and for the reasons above, (1) the decision of
the examiner refusing to allow claims 1, 3-7, 9 and 10 as
amended by amendments filed subsequent to the final rejection
is reversed, and (2) new rejections of claims 1, 3-7, 9 and 10
under 35 U.S.C. § 112, first and second paragraphs, are
entered pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
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