Appeal No. 98-1563 Page 11
Application No. 08/469,198
there is no disclosure directed to a "heating rate is up
to 200° C/minute". The appellants must disclose and
illustrate how and what to control the claimed velocity
of heating "up to 200° C/minute".
It is our view, that the above-noted rejection holds that
claims 39 and 52 fail to comply with both the description and
enablement requirements of the first paragraph of 35 U.S.C.
§ 112 and the definiteness requirement of the second8
paragraph of 35 U.S.C. § 112. Accordingly, we will treat each
of these requirements separately below.
The definiteness requirement
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976). In making this
determination, the definiteness of the language employed in
the claims must be analyzed, not in a vacuum, but always in
8It is well settled that the description and enablement
requirements are separate and distinct from one another and
have different tests. See In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984).
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007