Appeal No. 1998-0631
Application 07/957,990
when an applicant and the examiner disagree on whether or
not claims are directed to the elected subject matter,
claims held to be drawn to non-elected inventions, including
claims to non-elected species, are directed to be rejected
under 35 U.S.C. § 112, second paragraph: "Because applicant
believes the claims are readable on the elected invention
and the examiner disagrees, the metes and bounds of the
claim(s) cannot be readily ascertained, rendering the
claim(s) vague and indefinite within the meaning of
35 U.S.C. 112, second paragraph." This holding, if
traversed, is said to be appealable. Id.
"The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope."
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). In our opinion, the MPEP procedure is
improper because the claims do not become vague and
indefinite per se to the hypothetical person of ordinary
skill in the art just because the examiner and applicant do
not agree on whether the claims are drawn to an elected
species. It is quite possible for the claims to be definite
and yet not read on an elected species. The Examiner has
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