Appeal No. 97-4182
Application 08/429,150
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). As explained by the court in In re Steppan, 394 F.2d
1013, 1019, 156 USPQ 143, 148 (CCPA 1967):
The problem, in essence, is thus one of determining who
shall decide how best to state what the invention is.
By statute, 35 U.S.C. 112, Congress has placed no
limitations on how an applicant claims his invention,
so long as the specification concludes with claims
which particularly point out and distinctly claim that
invention.
In short, there is only one basic ground for rejecting a claim
under the second paragraph of § 112, namely, the language
employed does not set out and circumscribe a particular area
sought to be covered with a reasonable degree of precision and
certainty. See, e.g., In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
With specific regard to the examiner’s contention that the
claims are narrative in form and replete with functional
language, the court in In re Swinehart, 439 F.2d 210, 213,
169 USPQ 226, 229 (CCPA 1971) stated:
there is no support, either in the actual holdings of
our prior cases or in the statute, for the proposition,
put forward here, that “functional” language, in and of
itself, renders a claim improper [under 35 U.S.C.
§ 112, second paragraph].
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611
(CCPA 1981):
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