Appeal No. 97-3708
Application 08/418,321
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 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). If claim 18 is considered to be drawn to a
mixed method of forming and using, it is unclear whether the
potential infringer would be the maker of the shoe cover, the
user of the shoe cover, both the maker and the user, or only
one who makes and then uses the shoe cover.
For these reasons, it is our view that claim 18 does not
pass muster under the second paragraph of 35 U.S.C. § 112.4
Appellants’ argument on page 8 of the brief in response to the
examiner’s withdrawn § 112, second paragraph, rejection has
been considered. For the reasons discussed above, we simply
do not agree with appellants that the claim “clearly shows
that [it] is a method of forming and protecting.” Further, we
4We appreciate that this rejection is essentially the
same rejection that was apparently withdrawn by the examiner
in light of appellants’ second amendment after final
rejection, submitted February 24, 1997.
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