Appeal No. 2001-0421
Application 08/926,835
All of this leads us to conclude that the fundamental
problem in this case is that the claims are indefinite. Under
these circumstances, it is appropriate for us to vacate the
examiner’s prior art rejection in view of our new ground of
rejection under 35 U.S.C. § 112, second paragraph.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b) we enter the
following new ground of rejection:
Claims 1-37 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinguish
claimed the invention.
Claims 1-37 are indefinite in that, while purporting to be
drawn to processes, they fail to set forth any discernable method
steps.3 The claims should actively recite the steps of adding
3 Other cases where similar claims have been involved are Ex
parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Int. 1986)(non-
precedential)(citations omitted)(“While . . . the claims need not
recite all of the operating details, we do find that a method
claim should at least recite a positive, active step(s) so that
the claim will ‘set out and circumscribe a particular area with a
reasonable degree of precision and particularity,’ and make it
clear what subject matter [the] claims encompass, as well as
making clear the subject matter from which others would be
precluded.”)and Anglo-American Extrusion Co. v. Ladd, 226 F.
Supp. 295, 300, 140 USPQ 304 (D.D.C. 1964)(holding that claim
“recit[ing] a method which is defined not by positive method
8
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