Appeal No. 97-3071
Application 08/484,729
supporting disclosure on which it is based. See In re Cohn,
438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we are of
the opinion that the recitation of an “extended curvature”
introduces uncertainty into the claim which would preclude one
skilled in the art from determining the metes and bounds of
the claimed subject matter. As we have noted above in the
rejection under the first paragraph of § 112, the appellant’s
specification fails to provide any meaningful guidance as to
what the extent of an “extended” curvature is and what radius
of curvature, relative to the other dimensions of the piston,
is “sufficient” to yield the claimed result. Thus, when read
in light of the specification, one undertaking in future
enterprises would be at a loss to know what structure was
intended to be encompassed by an “extended curvature.”
In summary:
The rejection of claims 1-13 and 15 under 35 U.S.C. §
102(b) is reversed.
New rejections of claims 1-13 and 15 under 35 U.S.C. §
8
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