reversing patent office’s rejection of plaintiff’s patent as obvious
How later courts described this case
- reversing patent office’s rejection of plaintiff’s patent as obvious
- “[§ 112, ¶ 2] pertains only to claims.... Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to [§ 112, ¶ 1]; it is irrelevant to compliance with [§ 112, ¶ 2]”
- "[§ 112, p 2] pertains only to claims.... Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to [§ 112, p 1]; it is irrelevant to compliance with [§ 112, p 2]"
- “[T]he preamble elements in a Jepson-type claim are impliedly admitted to be old in the art....”
Written by the judges who cited it.
The opinion
BALDWIN, Judge,
concurring.
I am in full agreement with the result reached in the majority opinion.
I must strongly disagree with the suggestion that rejections under the second paragraph of § 112 are somehow limited only to a consideration Of whether or not the claims are vague. Extrinsic evidence will sometimes prove that an applicant is not “claiming the subject matter which [he] * * * regards as his invention.” In re Prater, 415 F.2d 1393 , 56 CCPA 1381, 162 USPQ 541 (1969).
This court has specifically countenanced such rejections:
If the scope of subject matter embraced by a claim is clear, and if the applicant has not otherwise indicated that he intends that claim to be of a different scope, then the claim does particularly point out and distinctly claim the subject matter which the applicant regards as his invention. [Emphasis ours.]
In re Borkowski, 422 F.2d 904, 909 , 57 CCPA 946, 952, 164 USPQ 642 , 645-646 (1970).
An assessment of all of the evidence in this case leads me to the conclusion that appellants are claiming their invention. The examiner argued that the lack of a lower limit to the pigment size in the claims “made the claims readable on fine particles” and since the specification states “that the instant invention lies in the use of coarse particles,” appellants do not claim the subject matter they regard as their invention. I disagree.
Each of the independent claims requires that the composition be an “electromagnetic energy shield.” The specification reveals that a composition in which the metal particles have insulating films of, e. g., the plastic matrix, does not operate as “electromagnetic energy shield.” The specification further states that the finely -divided pigment particles in the prior art composition will have “insulating layers of resin * * * between the contiguous particles.” Accordingly, the claims do not include subject matter outside the scope of appellants’ view of their own invention in spite of absence of the lower limit. See In re Mayhew, 527 F.2d 1229 , 188 USPQ 356 (Cust. & Pat.App. 1976) (concurring opinion).