Appeal No. 2006-1873 Page 11
Reissue Application No. 08/058,163
each of claims 1-19 under § 112, first and second paragraphs, in light of appellants’
claims and specification. A claim may be definite under § 112, second paragraph, but
unpatentable under § 112, first paragraph, if the full scope of the claim is not supported.
Here, for example, the examiner contends that the “claims are indefinite and confusing,
since the claims recite solid pheromone” (see Paper 5, p. 2, ¶ 5). However, none of the
claims on appeal recite the phrase “solid pheromone.” Whether or not appellants’
specification adequately describes and enables claimed compositions comprising a
“generic” pheromone versus a “liquid” pheromone or a “solid” pheromone, for example,
is an issue under the first paragraph of § 112. Breadth is not indefiniteness. In re
Conley, 490 F.2d 972, 976, 180 USPQ 454, 456 (CCPA 1974).
Third, the examiner should evaluate the sufficiency of appellants’ reissue
declaration under the current rules. 37 CFR § 1.175. [62 FR 53196, Oct. 10, 1997, as
amended at 69 FR 56544, Sept. 21, 2004.] A further discussion of reviewing reissue
oaths may be found in section 1444 of the MANUAL OF PATENT EXAMINING
PROCEDURES (“MPEP”), eighth edition, rev. 4, October 2005. Note that rules in force
at the time of decision should be enforced unless the appellant would be prejudiced by
its reliance on the former rules. Singh v. Brake, 222 F.2d 1363, 1371, 55 USPQ2d
1673, 1679 (Fed. Cir. 2000).
Fourth, neither the appellants nor the examiner have sufficiently developed the
issue of the patentability of claims 1-19 under § 103 over the Ciba-Geigy reference.
The principal problem is that the positions of the appellants and the examiner regarding
the patentability of the claimed invention over the Ciba-Geigy reference have not been
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