Appeal No. 2004-0906
Application No. 09/571,896
on appeal is “a pair” of elevator car guide rails that “is
substantially parallel planar” to a single wall (Brief, page 6;
Reply Brief, page 2). However, we agree with the examiner that the
clear and unambiguous language of this clause does not require
that the wall is planar, merely that the pair of car guide rails
is substantially parallel and in a plane (Answer, page 4). Since
appellants have indicated that they intend the claim to be of a
different scope, i.e., that the wall must, like the rails,
substantially define a plane (Brief, page 6; Reply Brief, page 2),
we conclude that the claims on appeal do not meet the requirements
of the second paragraph of section 112. In other words, the claims
do not set forth what the appellants regard as their invention.
See Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55 USPQ2d
1279, 1282 (Fed. Cir. 2000); In re Cormany, 476 F.2d 998, 1000-02,
177 USPQ 450, 451-53 (CCPA 1973) (A properly construed claim of
such scope as to include what appellants said they did not intend
to include does not comply with section 112, ¶2).
Furthermore, we note that another requirement of the second
paragraph of section 112 is that the claim must be sufficiently
definite. See Solomon v. Kimberly-Clark Corp., supra. In
determining whether the claim is sufficiently definite, we must
analyze whether one skilled in the art would understand the bounds
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