Appeal No. 97-2486
Application No. 08/308,983
point out and distinctly claim the subject matter which the
appellants regard as the invention. The purpose of the second
paragraph of § 112 is to provide those who would endeavor, in
future enterprises, to approach the area circumscribed by the
claims of a patent, with 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). Moreover,
in order to satisfy the requirements of the second paragraph
of § 112, a claim must accurately define the invention in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1366, 178
USPQ 486, 492-93 (CCPA 1973). In addition, while the language
of claim 38 may appear, for the most part, to be
understandable when read in the abstract, no claim may be read
apart from and independent of the supporting disclosure on
which it is based. See In re Cohn, 438 F.2d 989, 993, 169
USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we are of
the opinion that the recitation of the step of "coating the
entire cast conductive body" introduces uncertainty into the
17
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007