Appeal No. 2001-0242
Application No. 09/183,114
re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962);
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)),
we are constrained to reverse the examiner's rejection (3). We
hasten to add that this is a procedural reversal rather than one
based upon the merits of the Section 103 rejection.
Pursuant to 37 CFR § 1.196(b), we enter the following new
grounds of rejection:
Claims 2 through 15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellants
regard as the invention. The purpose of the second paragraph of
§ 112 is to provide those who would endeavor, in future
enterprises, to approach the area circumscribed by the claims of a
patent, with 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 order to satisfy the purpose of the second
paragraph of § 112, the claims in question must accurately define
the invention in the technical sense. See In re Knowlton, 481 F.2d
1357, 1366, 178 USPQ 486, 492-93 (CCPA 1973). It is important to
note that no claims may be read apart from and independent of the
4
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