Appeal No. 1997-1431
Application No. 08/323,976
It can be seen from the above rejection that while it
is ostensibly made under the second paragraph of 35 U.S.C. §
112, it includes questions of accuracy, inoperativeness,
utility, business propriety and support within the
specification. Although many of these issues are more
properly challenged under a different section of the statute,
for example, 35 U.S.C. § 101 or 35 U.S.C. § 112, first
paragraph, only a rejection under the second paragraph of 35
U.S.C. § 112 is before us.
The examiner does not really address the scope of the
invention recited in the claims or whether the artisan would
understand the scope of the claimed invention when considered
in light of the disclosure. Instead, the examiner has
apparently established a per se rule that any feature of a
claim which is deemed to lack clear support in the
specification under 37 CFR § 1.75(d)(1) automatically
fails to particularly point out the invention as required by
the second paragraph of 35 U.S.C. § 112. We are unable to
find indefiniteness in the claims before us, and
we find no merit in the examiner’s amalgamation of issues
lumped together as a rejection under the second paragraph of
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