Appeal No. 1997-0921
Application 08/038,577
value of the specification would have been such as to have indicated to the artisan
reasonable correlations to other types of databases, such that the scope of enablement
would have been reasonably sufficient to the artisan within 35 U.S.C. § 112, first
paragraph. As such, we must reverse the rejection of claims 1 through 9 under the
enablement portion of the first paragraph of
35 U.S.C. § 112.
Turning to the rejection of claims 1 to 9 under the second paragraph of
35 U.S.C. § 112, it is to be noted that to comply with the requirements of the cited
paragraph, a claim must set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the disclosure and the teachings
of the prior art as it would be by the artisan. Note In re Johnson, 558 F.2d 1008, 1016, 194
USPQ 187, 194 (CCPA 1977); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971).
We have reviewed and considered the examiner’s reasons in support of the
rejection, but are not convinced that the cited claims fail to comply with the second
paragraph of 35 U.S.C. § 112. At the outset, we note that the breadth of the claims is not
equated with indefiniteness of the claims. See In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971). It is perfectly permissible for appellant to claim his invention in
terms as broad as his application disclosure will support.
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