Appeal No. 1997-1397
Application 08/411,245
(Paper No. 12, mailed October 15, 1996).2
The arguments of appellant in opposition to the positions
taken by the examiner in rejecting the claims are found in the
brief (Paper No. 11, filed September 16, 1996).
The § 112, second paragraph, rejection
Considering first the standing rejection of the appealed
claims under 35 U.S.C. § 112, second paragraph, the purpose of
the second paragraph of 35 U.S.C. § 112 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. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). This is not to say that a lack of precision
2The final rejection also included a rejection of claims
11-14 under 35 U.S.C. § 112, first paragraph, as being based
on a specification that fails to comply with the enablement
and descriptive support requirements of that paragraph. In
that the examiner’s answer does not contain a restatement of
this rejection, we assume it to have been withdrawn. See Ex
parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007