Appeal No. 2000-2022
Application No. 08/888,663
function]
. . . in the written description means that the drafter has
failed to comply with the mandate of § 112 ¶ 2"). Applying
the rationale of these cases to the facts of the present case,
it is evident that since the '511 patent on which appellants
rely in their specification for a description of the structure
of the claimed adjusting means does not in fact describe any
such structure, appellants have failed to comply with the
second paragraph of § 112.
The Rejections Under § 103(a)
When claims are indefinite, it has been held that they
should be rejected under § 112, rather than under § 103. See
In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). However, in an effort to avoid piecemeal appellate
review, we will in this instance not reverse the § 103(a)
rejections on a pro forma basis, but rather will consider them
on the merits, construing (for the purpose of this decision
only) the above quoted means-plus-function elements of claims
6, 9 and 10 as being so broad as to include any and all
apparatus which would perform the recited function. Cf. Ex
parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993).
5
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