2174 Relationship Between the Requirements of the First and Second Paragraphs of 35 U.S.C. 112
The requirements of the first and second paragraphs of 35 U.S.C. 112 are separate and distinct. If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112, first paragraph) and should be rejected on that ground. In reBorkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). If the specification discloses that a particular feature or element is critical or essential to the practice of the invention, failure to recite or include that particular feature or element in the claims may provide a basis for a rejection based on the ground that those claims are not supported by an enabling disclosure. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). In Mayhew, the examiner argued that the only mode of operation of the process disclosed in the specification involved the use of a cooling zone at a particular location in the processing cycle. The claims were rejected because they failed to specify either a cooling step or the location of the step in the process. The court was convinced that the cooling bath and its location were essential, and held that claims which failed to recite the use of a cooling zone, specifically located, were not supported by an enabling disclosure (35 U.S.C. 112, first paragraph).
In addition, if a claim is amended to include an invention that is not described in the application as filed, a rejection of that claim under 35 U.S.C. 112, first paragraph, as being directed to subject matter that is not described in the specification as filed may be appropriate. In reSimon, 302 F.2d 737, 133 USPQ 524 (CCPA 1962). In Simon, which involved a reissue application containing claims to a reaction product of a composition, applicant presented claims to a reaction product of a composition comprising the subcombination A+B+C, whereas the original claims and description of the invention were directed to a composition comprising the combination A+B+C+D+E. The court found no significant support for the argument that ingredients D+E were not essential to the claimed reaction product and concluded that claims directed to the reaction product of a subcombination A+B+C were not described (35 U.S.C. 112, first paragraph) in the application as filed. See also In rePanagrossi, 277 F.2d 181, 125 USPQ 410 (CCPA 1960).