Appeal No. 1999-0936
Application No. 08/890,263
leading-edge sheath in combination with the blade
assembly, particularly point out and distinctly
claim the subject matter which appellants regard as
their invention, as required by the second paragraph
of 35 U.S.C. § 112?6
The purpose of the requirement stated in the second
paragraph of 35 U.S.C. § 112 is to provide those who would
endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970).
In the present case, appellants seek to change by reissue
the wording of the final step of method claim 3 from
“inserting the spread-apart leading-edge sheath onto the blade
subassembly” (patent claim 3, emphasis added) to “inserting
It is fundamental that the description requirement found in the first6
paragraph of 35 U.S.C. § 112 and the definiteness requirement found in the
second paragraph of 35 U.S.C. § 112 are separate and distinct. Accordingly,
just because claim language may have been properly “described” in the
disclosure as originally filed, it does not necessarily follow that that claim
language also passes muster under the second paragraph of 35 U.S.C. § 112.
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