Appeal NO. 1996-3683
Application 08/207,393
Claims 19 through 40 are rejected under 35 U.S.C. § 112,
second paragraph, because it cannot be determined what is
meant by the claim language "free carboxyl groups."
In In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971),
one of the predecessors to our reviewing court enunciated the
test for determining whether or not an application for patent
complied with the requirements of 35 U.S.C. § 112, first
paragraph. As the court noted, 439 F.2d at 1235, 169 USPQ at
238:
Any analysis in this regard should begin with the
determination of whether the claims satisfy the
requirements of the second paragraph. It may appear
awkward at first to consider the two paragraphs in
inverse order but it should be realized that when
the first paragraph speaks of "the invention", it
can only be referring to that invention which the
applicant wishes to have protected by the patent
grant, i.e., the claimed invention. For this reason,
the claims must be analyzed first in order to
determine exactly what subject matter they
encompass. The subject matter there set out must be
presumed, in the absence of evidence to the
contrary, to be that "which the applicant regards as
his invention."
Accordingly, before the examiner addressed the question of
whether or not appellants' disclosure was enabling for the
claimed subject matter, the examiner should have first
ascertained the metes and bounds of the claim term "free
carboxyl groups" as it is defined by appellants in their
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