Appeal No. 2004-1302
Application No. 09/789,757
piece, . . . [do] not reasonably provide enablement for a rosette
as unitarily molded with the tray and a separate insert, which
seems physically impossible” (emphasis added).
Because any analysis of a claim’s compliance with the first
paragraph of 35 U.S.C. § 112 necessarily involves, as an initial
step, a determination of what constitutes the claimed invention,
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971),
it follows that a claim’s failure to set forth the area sought to
be patented with a reasonable degree of precision precludes a
determination of whether that claim complies with the
requirements of the first paragraph of Section 112. In the
present case, we share the examiner’s concerns regarding the
language appellant has chosen to employ in setting forth the
subject matter of claims 9 and 15. However, for the reasons
stated infra in our new ground of rejection, we are of the
opinion that claims 9 and 15 do not set out and circumscribe the
subject matter sought to be patented with a reasonable degree of
precision and particularity as required by the second paragraph
of 35 U.S.C. § 112. As with rejections based on prior art, it
would be wrong for us to speculate as to precisely what subject
matter appellant intends claims 9 and 15 to cover. Compare In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
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