Appeal No. 2003-1512 13
Application No. 09/256,709
bounds of the claimed invention with the precision required by the second paragraph of
35 U.S.C. § 112. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970).
Since the metes and bounds of the claimed invention cannot be determined, I do
not believe that we should determine the merits of the rejection under the first paragraph
of Section 112. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971)(If upon analysis the claims were found to be indefinite under the second
paragraph of Section 112, they could not even be analyzed under the first paragraph of
§112, because that analysis of the claims could not be carried out unless one was able “to
determine exactly what subject matter they encompass”). Cf. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970)(“[a]ll words in a claim must be
considered in judging the patentability of that claim against the prior art. If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject matter does not
become obvious-the claim becomes indefinite.”); In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962)(Before claimed subject matter can properly be compared
to the prior art, it “is essential to know what the claims do in fact cover”.)
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007