This is an appeal from the decision of the Board of Appeals which affirmed the examinеr’s rejection of claims 1, 5-7, and 12-15 in the appellant’s application 1 entitled “Generation of Hydrogen and Electrical Energy.”
This case provides yet another illustration of the difficulties which beset an inventor, unfamiliar with Patent Office procеdure, who prosecutes his application pro se and of the continuing validity of the observation by the Supreme Court in Topliff v. Topliff,
* * * The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifiсations and claims, it is no matter of surprise that the latter frequently fail to describe with requisite cеrtainty the exact invention * * *.
The examiner rejected the appellant’s claims, directed to a method of producing hydrogen and electrical energy from carbon compounds, water and air, as failing to comply with the requirements of *906 35 U.S.C. § 112. 2 The examiner regarded the claims as indefinite, vague and unduly broad. The board agreed, finding that
* * * the claims do not set forth coherent related steps which cooperate with each other * * *.
The board refused to considеr new claims which the appellant presented in a reply brief to the examiner’s Answer, on thе ground that the reply brief was not timely and that it was not directed to any new points raised for the first timе in the examiner’s Answer as required by Patent Office Rule 193(b).
On appeal here, the appellant expresses no dissatisfaction with the examiner’s and the board’s rejection of claims 1, 5-7, and 12-15 under 35 U.S.C. § 112, nor does he point out where the board erred in rejecting those claims. While no question hаs been raised by the solicitor as to the sufficiency of the appellant’s reasons of аppeal to enable us to review that rejection, it seems to us that the reasonablе inference to be drawn from the appellant’s subsequent conduct is that he has abandonеd pursuit of that issue. See In re Le Baron,
What the appellant does ask this court to do, both in his briеf and in his Petition of Appeal, is to consider
* * * ordering the Commissioner of Patents to issue Letters Pаtent to said applicant, on said subject, containing Specifications, Drawings and the claims nos. 1, 2, 3, 4, 5, 6, 7 and 8 described in Paper No. 14 mailed Feb. 24-1964 * * *.
The appellant’s “Paper No. 14” is his reply brief tо the examiner’s Answer, and claims 1-8 (obviously misnumbered — see Patent Office Rule 126) set forth therein are those not considered by the examiner or the board. He asks that the court “permit considerаtion of my paper #14” and notes that, in his opinion,
The revised claims in Paper #14 * * * answer all the Examiner’s criticisims [sic] regarding broadness, coherence, indefiniteness. Considero tion of my paper #14 is essential to the success of my appeal.
We do not “direct” or “ordеr” the Commissioner of Patents to issue a patent even upon disagreeing with decisions of the Patent Office. The effect of our decision is to return the case involved to the Patent Office for further proceedings consistent with the court’s opinion. See Glass v. De Roo,
Thus, while we affirm the rejection оf claims 1, 5-7, and 12-15 for the reasons given by the examiner and the board, and also refuse to consider “claims 1-8” appearing in the appellant’s reply brief to the examiner’s Answer, we note thаt the appellant does not appear to be without remedy. As the solicitor points out:
Appellant might have secured consideration for the new claims proposed in his reрly brief by submitting them in a continuation application. This could yet be done, albeit at greater expense due to a recent statutory increase in fees. * * *
*907
The court also observes a recent change in Patent Office practice which greatly simplifies the procedure for filing a continuation application. See
The decision is affirmed.
Affirmed.
Notes
. Serial No. 123,408, filed July 10, 1961.
. The second paragraph of 35 U.S.C. § 112 reads:
The specification shall concludе with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.