Appeal No. 1997-0005
Application 08/340,966
ness,” he implicitly speaks of a first paragraph 35 U.S.C. §
112 requirement, i.e., “enablement,” which requires that the
specification teach those in the art to make and use the
invention without “undue experimentation.” In re Vaeck,
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991). In
similar circumstances, in In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 646 (CCPA 1970), the court instructed that
it should be made clear exactly which of
the several requirements of § 112 are
thought not to have been met. Is the claim
unclear or is the specification’s
disclosure inadequate to support it?
Moreover, in Borkowski, 422 F.2d at 909, 164 USPQ at 645,
the court stated that since the rejection of the claims was
predicated only on criticisms of the
disclosure portion of the specification, we
do not see how they are relevant to that
portion of the second paragraph of § 112
from which the examiner was quoting
which, as later stated by the Borkowski court, is essentially
a requirement for “precision and definiteness” of claim
language. Similarly here, we fail to see the relevance of the
examiner’s “undue experimentation” arguments and criticisms to
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