“We regard indefiniteness of claim language and inadequate support for it in the specification to be distinct questions, and we shall therefore consider them separately, the former being a question of compliance with the second paragraph of § 112 and the latter a question of compliance with the first paragraph.”
How later courts described this case
- “We regard indefiniteness of claim language and inadequate support for it in the specification to be distinct questions, and we shall therefore consider them separately, the former being a question of compliance with the second paragraph of § 112 and the latter a question of compliance with the first paragraph.”
Written by the judges who cited it.
The opinion
BALDWIN, Judge,
(concurring).
I agree with Judge Lane’s treatment of the rejection of claims 3-5, 7, 9, 10 *1003 and 12 based on the first paragraph of section 112. The entire court having thus concluded that the rejection of the claims on that basis was correct, it becomes unnecessary for the disposition of this case to even consider any rejection which might have been made based on the second paragraph of section 112.
With regard to claim 11, I agree that appellants have neither established that the judicial doctrine of lost counts, with the limitations placed on it in Risse, should be overruled nor that it is not applicable to the facts before us. Appellants make much of the fact that because their application was in interference with a patent, they could not introduce a count covering the propyl species into the interference. At the same time, however, appellants appear to concede that Brown’s butyl species was prior to their own propyl species. That being the case, appellants could not have obtained a claim to the propyl species under the doctrine of lost counts even if they could have introduced into the interference a claim covering the propyl species, and thus could have brought in evidence showing their invention date regarding that species.