Appeal No. 2002-1919 Page 5
Application No. 09/266,376
requirement . . . of the second paragraph of § 112 which was the stated basis for the
rejection, given the shorthand name ‘indefiniteness.’” In re Conley, 490 F.2d 972, 975,
180 USPQ 454, 456 (CCPA 1974). "It is essentially a requirement for precision and
definiteness of claim language so that the claims make clear what subject matter they
encompass and thus what the patent precludes others from doing." In re Spiller, 500
F.2d 1170, 1180, 182 USPQ 614, 621 (CCPA 1974) (citing Conley, 490 F.2d at 975,
180 USPQ at 456). "The second paragraph of §112 pertains only to claims." In re
Ehrreich, 590 F.2d 902, 906, 200 USPQ 504, 508 (CCPA 1979) (citing In re Borkowski,
422 F.2d 904, 909, 164 USPQ 642, 645 (1970)). "Agreement, or lack thereof, between
the claims and the specification is properly considered only with respect to the first
paragraph of §112; it is irrelevant to compliance with the second paragraph of that
section." Id., 164 USPQ at 508.
Here, the alleged failure of the appellants' originally filed specification to disclose
a semiconductor device operating at temperature equilibrium and in a pulse mode
cannot serve as a basis for an indefiniteness rejection. We find no indefiniteness in the
use of the above-quoted limitations in the rejected claims. Instead, we agree with the
appellants that the examiner's "recitation of 'second paragraph' and the language
immediately following is a typographical error and should have read 'first paragraph.'"
(Appeal Br. at 3.) Accordingly, we treat the rejection as one under 35 U.S.C. § 112, ¶ 1,
for lacking an adequate written description.
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