Appeal No. 1997-1351
Application 08/127,924
& I Steel Corp., 193 USPQ 763, 774 (D. Colo. 1976)." This
is an accurate statement. While the statutory basis for
invalidity is not stated, it is probably 35 U.S.C. § 112,
second paragraph. See General Electric Company v. United
States, 572 F.2d 745, 198 USPQ 65 (Ct. Cl. 1978)
(Headnote 7: Patentee whose combination as claimed is
inoperative for its claimed purpose has failed to distinctly
claim disclosed invention as required by 35 U.S.C. 112,
second paragraph; claim must recite structure capable of
performing its purported function to be valid.).
"Incompleteness" is not a common rejection, but it is
discussed as a ground of rejection in Manual of Patent
Examining Procedure (MPEP) § 706.03(f) (5th ed. Rev. 14,
Nov. 1992), now §§ 706.03(c) and 2172.01 (6th ed., Rev. 3,
July 1997). As now stated in MPEP § 2172.01 (a new
section):
A claim which omits matter disclosed to be
essential to the invention as described in the
specification or in other statements of record may be
rejected under 35 U.S.C. 112, first paragraph, as not
enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356
(CCPA 1976); MPEP 2164.08(c). Such essential matter may
include missing elements, steps or necessary structural
cooperative relationships of elements described by the
applicant(s) as necessary to practice the invention.
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