Appeal No. 2006-1246 Page 8
Application No. 09/726,372
Pursuant to the provisions of 37 CFR § 41.50(b)(2004) claims 28 through 55 are
rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and
distinctly claim the subject matter which the appellants regard as his invention.
A principal purpose of the second paragraph of § 112 is to provide those who
would endeavor, in future enterprises, to approach the area circumscribed by the claims of
a patent, with adequate notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection involved and evaluate the
possibility of infringement and dominance. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970).
As the court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971), the determination of whether the claims of an application satisfy the
requirements of the second paragraph of § 112 is
To determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity. It is
here where the definiteness of language employed must be analyzed -- not
in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art. [Footnote omitted.]
Upon review of Appellants’ disclosure (which includes Figures 1 and 2), we cannot
find a clear depiction of the crystal grains in the outer surface area. There is no indication
of an acceptable size for the crystal grains in the outer surface area. As such, it is not
possible to determine the size of the grains in the outer surface and whether these grains
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