Appeal No. 2002-2136 Page 6
Application No. 09/761,077
In this instance, as discussed above, appellant’s claim 2 combines two separate
statutory1 classes of invention in a single claim, namely, a manufacture and a process
of using such manufacture. Accordingly, competitors would not be able to determine,
with any degree of certainty, whether claim 2 is directed to the article of manufacture
recited in the first paragraph of the claim or to the process of using such article of
manufacture recited in the second paragraph of the claim so as to permit evaluation of
the possibility of infringement. We thus conclude that appellant’s claim 2 is not
sufficiently precise to permit those who would endeavor in the future to approach the
area circumscribed by claim 2 to ascertain with a reasonable degree of certainty the
metes and bounds of the claimed invention as required by the second paragraph of 35
U.S.C. § 112. See Ex parte Lyell, 17 USPQ2d 1548, 1551 (Bd. Pat. App. & Int. 1990)
and Ex parte Forsyth, 151 USPQ 55, 56 (Bd. Pat. App. & Int. 1966), wherein it is stated:
A claim such as those before us cannot be both method and
apparatus. It must be clear by its wording that it is drawn to
one or the other of these two mutually exclusive statutory
classes of invention. A method or process, as indicated
above, is an act or a series of acts and from the standpoint
of patentability must distinguish over the prior art in terms of
steps, whereas a claim drawn to an apparatus must
distinguish in terms of structure.
1 See 35 U.S.C. § 101, which requires that an invention, in order to be patentable, must be a “new
and useful process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof” (emphasis added).
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