Appeal No. 1998-0515
Application 08/425196
The claims on appeal are drawn to a mounting means for photographic prints, etc. They are
reproduced in the appendix of appellant's brief (filed May 23, 1997).2
Claims 1 to 20 stand finally rejected for failure to comply with 35 U.S.C. § 112, second
paragraph.3
As stated in In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970), the
purpose of the second paragraph of § 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.
See also In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("An essential
purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous.
Only in this way can uncertainties of claim scope be removed, as much as possible, during the
administrative process").
In the present case, the examiner stated in the final rejection that claims 1 to 20 do not comply
with § 112, second paragraph, because they
2On page 3 of the answer, the examiner notes a few errors in the copy of the claims. In
addition to these, -- parallel to said length of said mounting strip and -- should be between "running"
and "along" in claim 1, line 6.
3Additional rejections of the claims under 35 U.S.C. § 112, first paragraph, § 102(b) and §
103(a) are withdrawn in the examiner's answer.
2
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