Appeal No. 94-3255
Application 07/673,264
Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974).
Before the examiner can analyze claims under 35 U.S.C. § 112,
first paragraph, and I can review that analysis, the subject
matter the claims encompass must be determined.
Once having determined that the subject
matter defined by the claims is particular and
definite, the analysis then turns to the first
paragraph of section 112 to determine whether
the scope of protection sought is supported and
justified by the specification disclosure.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). Having determined that appellants’ claims do not
particularly point out and distinctly claim the subject matter
which applicants regard as their invention, as is required by
the second paragraph of section 112, I conclude that the
examiner cannot have adequately analyzed the full scope of the
claimed subject matter and, therefore, the merits of the
examiner’s rejections under 35 U.S.C. § 112, first paragraph,
cannot be properly reviewed.12
12 Note that a specification need only describe a
single method of making the products claimed to enable one
skilled in the art to make the full scope of the products
claimed if it would have been within the ordinary skill in the
art to make the full scope of the products claimed by the
single method described without undue experimentation. In re
(continued...)
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