Appeal No. 1999-0752
Application No. 08/806,103
Claims 1 through 3, 5, 7 through 10, 12 through 15 and
17 through 19 stand 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 appellants
regard as their invention. Claims 1 through 3, 5, 7 through 10,
12 through 15 and 17 through 19 stand rejected under 35 U.S.C.
§ 112, first paragraph, as lacking an enabling disclosure in the
application disclosure to make and use the claimed invention.
We reverse each of the foregoing rejections for essentially
the reasons set forth in the Brief and the Reply Brief. We add
the following primarily for emphasis and completeness.
We turn first to the examiner’s rejection of claims
1 through 3, 5, 7 through 10, 12 through 15 and 17 through
19, rejected under 35 U.S.C. § 112, second paragraph. The
purpose of the second paragraph of Section 112 is to basically
insure, with a reasonable degree of particularity, an adequate
notification of the metes and bounds of what is being claimed.
See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA
1970). As the court stated in In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), the determination of whether the
claims of an application satisfy the requirements of the second
paragraph of Section 112 is
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