Appeal No. 2000-2156 Page 6
Application No. 08/431,727
lack merit.
We note the examiner’s statement that applicant’s claim language “does not set
fixed metes and bounds” to any person skilled in the art (Paper No. 50, page 3, last
paragraph). According to the examiner, when claims do not adequately fix the metes
and bounds of the invention, they should be rejected under 35 U.S.C. § 112, first
paragraph, as based on a non-enabling disclosure. That is not our understanding of
the law. If the claims failed to delineate the metes and bounds of applicant’s invention,
and we hold that they do not, such failure would give rise to a rejection under 35 U.S.C.
§ 112, second paragraph. Again, the Examiner’s Answer is confusing and unhelpful in
framing the issues on appeal.
Finally, we express our dismay at the examiner’s statement that
Claim 123 is drawn to a research strategy for designing soft
drugs . . . no limits are placed on what sort of drug this is practiced with,
making classification and therefore, examination impossible. [Paper No.
43, page 2, last paragraph; emphasis added]
Again, it is not the duty of the board to examine patent applications de novo. That is
the duty of the patent examiner. On return of this case to the examining corps, we trust
that the application will be adequately classified, searched, and examined.
Conclusion
In conclusion, we find little merit in the rejections presented for review under
35 U.S.C. § 112, first paragraph; 35 U.S.C. § 112, second paragraph; or 35 U.S.C.
§ 103(a). Each of those rejections is reversed for reasons succinctly set forth in
applicant’s principal brief.
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