“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
LANE, Judge, concurring, with whom MARKEY, Chief Judge, joins.
The board held claims 3-5, 7, 9-10 and 12 to be “inadequately supported” by the specification and sustained the rejection of those claims under 35 U.S.C. § 112 . It did so on the finding that:
At no point in the application is there any indication that, when a mixture of nitroalkane and epoxide is used, the former component should be used in amount “large enough to stabilize liquid methylchloroform refluxing under atmospheric conditions under total reflux and in which is immersed an aluminum strip.”
The board’s holding was that there is no description of the claimed invention in the specification as required toy the first paragraph of § 112. In re Smith, 458 F.2d 1389 , 59 CCPA _, _ (1972). That conclusion is well founded.
Appellants rely on example I of their specification in which 3.0% nitromethane was found sufficient to stabilize methylchloroform and was also used in conjunction with 1.0% butylene oxide to give an even longer stabilization period. That example does not suggest the claim limitation. It is at best only consistent with the claims. The example fails to indicate to one of ordinary skill in the art that the quantity of nitroalkane to be used when an epoxide stabilizer is added is an amount “large enough to stabilize liquid methylchloroform refluxing under atmospheric conditions under total reflux and in which is immersed an aluminum strip.” See In re Smith, supra; In re Lukach, 442 F.2d 967 , 58 CCPA 1233 (1971).
The board’s decision is clearly sustainable on the ground that the specification lacks a legally sufficient description of the claimed subject matter. Affirmance on that basis renders consideration of the § 112, second paragraph, rejection unnecessary, and we do not reach it. Although the principal opinion would sustain the second paragraph rejection as well as the first paragraph rejection, we are not convinced of its correctness on the facts of this case. Having determined that the specification does not describe the claimed invention, we see no reason to attempt to define the claim language by reference to that specification.
We affirm the board’s decision with respect to claims 3-5, 7, 9-10 and 12 on the basis of the § 112, first paragraph, rejection.
We agree that In re Risse, 378 F.2d 948 , 54 CCPA 1495 (1967) is controlling with respect to claim 11 and the board’s decision as to that claim is also affirmed.