Appeal No. 2000-0791 Page 4
Application No. 08/858,286
The section of the MPEP referred to by the appellant focuses upon the use of
trademarks in the specification; trademark use in claims is not specifically mentioned. The
question that arises when a trademark is used in a claim is whether the claim particularly
points out and distinctly claims the invention such that those who would approach the area
circumscribed by the claim may readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement and dominance. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). It is our view that
since a trademark does not identify the goods but identifies the source of the goods, and
since the formula or the characteristics of the product to which the trademark is applied
may be changed from time to time and yet the product may continue to be sold under the
same trademark, the use of a trademark as a limitation in a claim obscures the metes and
bounds of a claim, causing it to be indefinite.
The Rejection Under 35 U.S.C. § 102(b)
Claims 1-4 and 9-13 stand rejected as being anticipated by Breen. Anticipation is
established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of the claimed invention. See In re
Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
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