Appeal No. 2001-1101 Page 6
Application No. 08/932,834
Answer (Paper No. 43), the examiner points to several aspects of the appealed claims
which are incorrect, indefinite, ambiguous, or simply make no sense. We shall not
belabor the record on this point, because we agree substantially with the examiner's
analysis. For reasons ably set forth by the examiner in the Answer, we affirm the
rejection of claims 1, 2, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18 through 21, and 23 through 27
under 35 U.S.C. § 112, second paragraph, as not particularly pointing out and distinctly
claiming the subject matter which applicants regard as their invention.
We here note that the examiner rejected all claims in the application, except
claim 14, under 35 U.S.C. § 112, second paragraph. Our affirmance of that rejection
constitutes a disposition of the appeal with respect to all claims except claim 14.
35 U.S.C. § 112, First Paragraph
The remaining issue is whether the examiner erred in rejecting all of the
appealed claims under 35 U.S.C. § 112, first paragraph, as based on a specification
which does not adequately teach any person skilled in the art how to use the claimed
invention. Under the circumstances, however, we shall not reach the merits of the "how
to use" rejection with respect to claims 1, 2, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18 through 21,
and 23 through 27. Again, those claims are indefinite within the meaning of 35 U.S.C.
§ 112, second paragraph; they are not precise, clear, correct, and unambiguous. We
think it imperative to understand the metes and bounds of the claims before proceeding
to a resolution of an examiner's rejection under 35 U.S.C. § 112, first paragraph. Cf.
In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962)(Before deciding a
rejection under 35 U.S.C. § 103, "it is essential to know what the claims do in fact
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