Appeal No. 1997-0538
Application No. 08/262,168
must demonstrate that the claims do not “set out and
circumscribe a particular area with a reasonable degree of
precision and particularity”. In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). The purpose of the
second paragraph of Section 112 is to basically insure an
adequate notification of the metes and bounds of what is being
claimed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970). On this record, there simply is no
explanation on the part of the examiner why the metes and
bounds of the claims are not set forth with “a reasonable
degree of precision and particularity”. Accordingly, we
reverse the examiner’s decision rejecting claims 13 and 19
under 35 U.S.C. § 112, second paragraph.
102 Rejections
The examiner has rejected product-by-process claims 8, 13
and 19 under 35 U.S.C. § 102 (a) or (e) as anticipated by the
disclosure of Kim or Larsen. The examiner’s § 102 rejection
is appropriate if Kim and Larsen individually disclose a
product which appears to be identical to or slightly different
from a product claimed in product-by-process claims. In re
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