Appeal No. 2001-2168
Application No. 09/083,307
filed, does not satisfy the description requirement in that
paragraph.
3. Claims 10-15, 17 and 23 are rejected under the
first paragraph of 35 U.S.C. § 112 as being based on a
specification which fails to provide an enabling
disclosure.
With regard to our new rejection of the appealed
claims under the second paragraph of § 112, it is
established patent law that the claims must define the
metes and bounds of the invention with a reasonable degree
of precision. In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). Furthermore, it is well settled that
a claim in an application must accurately define the
applicant’s invention. In re Knowlton, 481 F.2d 1357,
1366, 178 USPQ 486, 492 (CCPA 1973).
Our difficulty with the language in claim 17 centers
on the recitation that the agent in the kit may be
radiation per se. The term “radiation” is defined in
Webster’s Third New International Dictionary (G. & C.
Merriam Company, 1971) as “radiant energy in the form of
rays.” It is not clear how “rays” (which lack molecular
substance) can be physically retained or incorporated into
a kit for later use in the treatment of a patient. Being
18
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