Appeal No. 98-0102
Application 08/030,734
means (condenser 19) and the heat absorber means (evaporator).
Does this difference constitute a “reduced difference” which
is effected “substantially as permitted by said largely
enveloping construction”, as claimed? We do not consider that
one of ordinary skill, reading claim 1 in light of the
disclosure, would be able to answer this
question. As stated in In re Hammack, 427 F.2d 1378, 1382,
166 USPQ 204, 208 (CCPA 1970):
All provisions of the statute must be complied with
in order to obtain a patent. The requirement stated
in the second paragraph of section 112 existed long
before the present statute came into force. Its
purpose 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.
Appellant’s claims do not comply with this requirement.
Accordingly, pursuant to our authority under 37 CFR
1.196(b), claims 1 to 7, 10, 12, 15 and 24 to 33 are rejected
for failure to comply with 35 USC § 112, second paragraph.
Claims 3, 4, 7, 10, 12 and 15 are also rejected under the
second paragraph of 35 USC § 112 on the following additional
8
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