Appeal No. 98-1848
Application 08/500,781
the examiner in his rejections.
Pursuant to our authority under 37 CFR 1.196(b), we make
the following new rejection.
Claims 3 to 5, 7 to 9, 11 to 13, 15, 21, and 22 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 #425254 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 4). Presumably, the examiner has drawn our
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