Appeal No. 97-2554
Application No. 08/164,112
will not reduce urine odor. The examiner takes the
position that claim 1 as presently pending claims
surfactants that will work and surfactant that will
not work. The scope of the claims are [sic] not
enabled by the specification.
Discussion
In In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971),
the claims were rejected under 35 U.S.C. § 112, both under the
first paragraph, as being of a scope not supported by an
adequate enabling disclosure, and under the second paragraph
as indefinite. The Court held that the determination of
compliance with the second paragraph of § 112 must be made
first “in order to determine exactly what subject matter [the
claims] encompass” (439 F.2d at 1235, 169 USPQ at 238):
This first inquiry therefore is merely to
determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here
where the definiteness of the language employed must
be analyzed - not in a vacuum, but always in light
of the teachings of the prior art and of the
particular application disclosure as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art.2
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It is important here to understand that under this2
analysis claims which on first reading - in a vacuum, if you will
- appear indefinite may upon a reading of the specification
disclosure or prior art teachings become quite definite. It may
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