Appeal No. 98-1019
Application 08/500,782
the following new rejection.
Claims 1, 3 to 14, 16 to 18, 21, and 26 are rejected
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). For the reasons stated
above, the appealed claims fail in this purpose in that they
do not set forth the subject matter sought to be patented with
a reasonable degree of precision and accuracy.
As a final point, we note that the examiner has mentioned
that “German Patent #425,254 has been made of record, but not
applied in the rejection” (answer, page 3) and that “the Board
of Appeals has the discretion to apply this reference”
(answer, page 5). Presumably, the examiner has drawn our
attention to this reference in the hope that it might form the
basis of a new ground of rejection under 37 CFR § 1.196(b) in
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