Appeal No. 97-2554
Application No. 08/164,112
The purpose of the second paragraph of § 112 is:
to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by
the claims of a patent, with the adequate notice
demanded by due process of law, so that they may
more readily and accurately determine the boundaries
of protection involved and evaluate the possibility
of infringement and dominance.
In re Hammack, 427 F.2d at 1382, 166 USPQ at 208. The present
claims do not fulfill this purpose. Even assuming that they
should be read as being drawn to the application of surface-
active agents having an HLB less than about 12 which are
effective to reduce urine odor, the discrepancies and
inconsistencies in the specification, as discussed above, are
such that one of ordinary skill could not determine whether or
not the use of a particular surfactant would fall within the
scope of claim 1. As stated in In re Cohn, 438 F.2d at 993,
169 USPQ at 98, “[N]o claim may be read apart from and
independent of the supporting disclosure on which it is
based.” If one of ordinary skill contemplated the use of
Unithox 450, for example, in the claimed method, it could not
be determined whether it would fall within the scope of the
claims because on the one hand it would meet the test set
forth on page 13, lines 3 to 7, as being “effective to reduce
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