Broad or narrow-Continued
In general-Continued
imagined, other embodiments can be made without difficulty and their
performance characteristics predicted by resort to known scientific
laws; in cases involving unpredictable factors, such as most chemical
reactions and physiological activity, scope of enablement varies inversely
with degree of unpredictability of factors involved. In re Fisher, 1099.
Claims are not rejected as unduly broad under 35 USC 112 for non-
inclusion of limitations dealing with factors which must be presumed
to be within level of ordinary skill in the art; claims need not recite
such factors where one of ordinary skill in the art, to whom specification
and claims are directed, would consider them obvious. In re Skrivan,
1201.
Functional term “an effective amount * * * for growth stimulation" is
not objectionable where amount as such is not critical; those skilled in
the art will be able to determine from written disclosure and its exam-
ples what an effective amount for growth stimulation is; granted that
proportions may vary, determination of amounts is not beyond skill of
the art and does not involve undue experimentation to ascertain them;
on the other hand, for applicant to ascertain and recite numerical limits
for each parasympatholytic agent known would very likely require
undue research. In re Halleck, 954.
Court disagrees with Board's view that, where claim reads on both
statutory and nonstatutory subject matter, it cannot be in compliance
with section paragraph of 35 USC 112; paragraph requires that appli-
cant distinctly claim what he regards as his invention; to inject any
question of statutory subject matter into paragraph is to depart from
its wording and to complicate the law unnecessarily; proper considera-
tion is whether claims cover only what applicant regards as his inven-
tion; applicant states that he intends claims to cover only the machine
implementation of process and not the mental implementation thereof;
if claims accomplish that intent, not only will applicant overcome
rejection under section 112, but he will also overcome rejection under
section 101, since machine-implemented process is statutory. In re
Mahony, 939.
Since rejection of claims for failure to particularly point out and
distinctly claim invention is predicated only on criticisms of disclosure
portion of specification, they are not relevant to portion of second para-
graph of 35 USC 112 which pertains only to claims. In re Borkowski,
946.
Requirement of second paragraph of 35 USC 112 is not that claims
particularly point out and distinctly claim "the invention" but the
"subject matter which applicant regards as his invention"; this means
Indefinite-Continued
In general-Continued
that applicant must particularly point out and distinctly claim subject
matter sought to be patented. In re Borkowski, 946.
35 USC 112 does not permit examiner to study applicants' disclosure,
formulate a conclusion as to what examiner regards as broadest in-
vention supported by disclosure, and then determine whether claims
are broader than examiner's conception of what "the invention" is;
first sentence of second paragraph of section 112 is essentially a require-
ment for precision and definiteness in claim language; if scope of sub-
ject matter embraced by claim is clear, and if applicant has not other-
wise indicated that he intends claim to be of different scope, claim does
particularly point out and distinctly claim the subject matter which
applicant regards as his invention, i.e., if "enabling" disclosure of
specification is not commensurate in scope with subject matter encom-
passed by claim, that fact does not render claim imprecise or indefinite
or otherwise not in compliance with second paragraph of section 112;
rather, claim is based on insufficient disclosure (first paragraph of sec-
tion 112) and should be rejected on that ground. In re Borkowski, 946.
35 USC 112 does not require that claims define "the invention;"
second paragraph of section 112 requires that claims define "subject
matter which the applicant regards as his invention"; this means that
applicant must set definite boundaries on patent protection sought; thus,
claims need not recite catalytic impurities which examiner alleges are
contained in claimed polymers, where applicants do not regard such
impurities as being present in polymers, much less regard them as
element of invention. In re Wakefield, 959.
All words in claim must be considered in judging patentability of claim
against prior art; if no reasonably definite meaning can be ascribed to
terms in claim, subject matter does not become obvious—the claim be-
comes indefinite. In re Wilson, 1029.
To require claims to speak in language of prior art, rather than in
more precise current language, is impracticable; solution to problem is
to allow use of new expressions when they are definite, and to allow
Patent Office to call for comparative evidence when there is reason to
believe that prior art discloses matter which renders claimed subject
matter old or obvious; thus, use of "International Standards" is
approved where specification states that it is the generally accepted
standard adopted by named committee and one milligram of the standard
equals one International Unit. In re Fisher, 1099.
Whether terms in claims are conventional is not necessarily con-
trolling on question of indefiniteness; applicant ordinarily is entitled
to be his own lexicographer so long as his meaning is clear; "eliminat-
ing" and "rejecting" are held not to be indefinite. In re Castaing, 1332.
Where all steps of process claims can be carried out by disclosed
apparatus, claims are not directed to nonstatutory processes merely
because some or all steps therein can be carried out in or with aid of
human mind or because it may be necessary for one performing the
processes to think; all that is necessary to make a sequence of opera-
tional steps a statutory "process" within 35 USC 101 is that it be in
Indefinite-Continued
In general-Continued
the technological arts so as to be in consonance with Constitutional pur-
pose to promote progress of "useful arts"; of course, to obtain a valid
patent, claim must also comply with all other provisions of statute,
including definiteness under section 112; step requiring exercise of
subjective judgment without restriction might be objectionable as
rendering claim indefinite, but this would provide no statutory basis
for rejection under section 101. In re Musgrave, 1352.
Second paragraph of 35 USC 112 defines a requirement additional
to that of distinguishing from prior art under sections 102 and 103;
essence of that requirement is that language of claims must make it
clear what subject matter they encompass. In re Hammack, 1225.
Requirement stated in second paragraph of 35 USC 112 existed long
before present statute came into force; its purpose is to provide those
who would endeavor, in future enterprise, to approach area circum-
scribed by patent claims, with adequate notice demanded by due process
of law, so that they may more readily and accurately determine bound-
aries of protection involved and evaluate possibility of infringement
and dominance. In re Hammack, 1251.
Requirement of second paragraph of 35 USC 112 means that claims
must make it clear what subject matter they encompass. In re Hammack,
1251.
Fact that indefiniteness in claims is of a semantic origin does not
render indefiniteness unobjectionable merely because it could have been
corrected. In re Hammack, 1251.
Fact that large number of substances is encompassed by claims,
through the possible addition of unrecited impurities, does not make
claims indefinite, since scope of claims is still definite because each
recited limitation is definite. In re Wakefield, 959.
35 USC 112 does not require that claims define "the invention;"
second paragraph of section 112 requires that claims define "subject
matter which the applicant regards as his invention"; this means that
applicant must set definite boundaries on patent protection sought; thus,
claims need not recite catalytic impurities which examiner alleges are
contained in claimed polymers, where applicants do not regard such
impurities as being present in polymers, must less regard them as ele-
ment of invention. In re Wakefield, 959.
Claim reciting "at least" 24 amino acids in a certain sequence is not
so broad as to be indefinite in that it does not positively identify entire
chemical structure of compound claimed; while absence of limitation
as to amino acids beyond 24th position broadens claim and raises ques-
tions of sufficiency of disclosure, it does not render claim indefinite;
absence of the limitation has a precise meaning; regardless of specifica-
tion, claimed subject matter is not limited by presence, absence, or
sequence of amino acids beyond 24th position; this principle is basis of
court's refusal to read limitations of specification into claims; moreover,
even if claim is so broad as to cover materials not taught or represented
by specific materials formed in applicant's examples, this is irrevelant
to issue of definiteness although it is important in assessing sufficiency of
disclosure to support such broad coverage. In re Fisher, 1099.
Claims to method of producing antidepressant activity which com-
prises internally administering certain compounds are not indefinite,
although there is no reference to a host, since it is clear that compounds
would find their primary use as medication for humans with a possibility
that they might find some veterinary use in other animals. In re Gardner,
1207.
Broad definitions of quantity or dosage are not indefinite where inven-
tion resides in finding the activity rather than in discovering some
critical range or the like. In re Gardner, 1207.
Statutory basis for old combination rejection is found in that portion
of 35 USC 112 which requires that claims specifically point out and
distinctly claim the invention; statutory language is only proper basis
for old combination rejection, and in applying the rejection that lan-
guage determines what applicant has a right and an obligation to do;
old combination rejection is improper where elimination of limitation
from body of claim, and moving it to preamble, would greatly increase
number of words in preamble and impair, rather than enhance, intelli-
gibility of claim; moreover, complete elimination of limitation would
not make claim more particular or distinct, since monopoly defined by
claim would then be substantially broadened. In re Bernhart, 737.
Claims are allowed although structural recitations therein find
response in reference since preamble of claims is more than a mere
statement of intended use inasmuch as it gives life and meaning to
recitations in body of claims; considering introductory language as pro-
viding background for words that follow, one skilled in art would not be
expected to consult art of which reference is a part; court's only con-
sideration is with disclosure of reference alone; suggestion of claimed
structure is not found therein. In re Szajna, 899.
Apparatus claims, which recite no mental steps and contain no ele-
ment requiring or permitting incorporation of human faculties in appa-
ratus, do not define invention as anything in which human mind can be
used as a component even though claims are defined as having specific
means, since claims cover only machines mentioned in specification and
their equivalents; human being cannot be equivalent of a machine. In
re Bernhart, 737.
Third paragraph of 35 USC 112 requires that "means" *
performing a specified function," in order to be accorded structural
significance, be a means which possesses a presently existing function
or a presently existing capability to perform a function; thus, where
means performs function during process of manufacturing claimed
article, it does not distinguish over article of reference. In re Bozek, 713.
Claims need not recite result which will inherently occur through
recited limitation; advantages accruing from claimed process need not
be recited; such advantages should be considered in determining patent-
ability. In re Estes, 896.
Specification must support.
35 USC 112 does not permit examiner to study applicants' disclosure,
formulate a conclusion as to what examiner regards as broadest inven-
tion supported by disclosure, and then determine whether claims are
broader than examiner's conception of what "the invention" is; first
sentence of second paragraph of section 112 is essentially a requirement
for precision and definiteness in claim language; if scope of subject
matter embraced by claim is clear, and if applicant has not otherwise
indicated that he intends claim to be of different scope, claim does
particularly point out and distinctly claim the subject matter which
applicant regards as his invention, i.e., if "enabling" disclosure of
specification is not commensurate in scope with subject matter encom-
passed by claim, that fact does not render claim imprecise or indefinite
or otherwise not in compliance with second paragraph of section 112;
rather, claim is based on insufficient disclosure (first paragraph of
section 112) and should be rejected on that ground. In re Borkowski, 946.
Rejection of claims as being broader than invention described in
specification is an assertion that specification is insufficient to support
claims of breadth sought; proper statutory basis for such rejection is
first paragraph of 35 USC 112. In re Wakefield, 959.
COMMISSIONER OF PATENTS.
Actions appealable or petitionable.
Examiner's decisions directly relating to rejection of claims are
subject to appeal; these questions generally deal with merits of the
invention, involving factual determinations and legal conclusions drawn
therefrom regarding application disclosure, the claims, and prior art;
examiner's rulings dealing with procedural matters, such as whether
affidavit or amendment is untimely, and formal requirements, such as
whether a new application title will be required, are reviewable upon
petition; thus, examiner's refusal to allow entry of amendment to claims
or to consider Rule 131 affidavit is reviewable only by petition. In re
Searles, 912.
Applicant's proper avenue for review of Board of Appeals' decision
dismissing appeal for failure to file reply brief, in response to new ground
of rejection contained in Examiner's Answer, is by recourse to Patent
Office Rule 181 and 5 USC 701-6. In re James, 1371.
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