Indefiniteness rejection for claims that are inconsistent with spec

Takeaway: The BPAI has affirmed indefiniteness rejections under § 112, 2nd paragraph when a claims is inconsistent with the specification, citing In re Cohn, 438, F.2d 939, 993 (CCPA 1971)(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as being indefinite, where the claims were inherently inconsistent with the description, definitions, and examples appearing in applicant’s specification).

Details:

In two cases, the claims described the shape of an element, but the Board found that the word used to describe the shape didn't match the drawings. In one case (Ex parte Sazy), the claim recited "banana shaped unitary body" and the drawings depicted a shape which suggested a banana. However, the Board noted that the dictionary definition of banana included "tapering" : "elongated often curved and usually tapering fruit of the banana plant." The Board found that the shape in the Applicant's drawing was elongated and curved, but not tapering. The Board affirmed the indefiniteness rejection because of this inconsistency between drawings and claims.

In another case involving a shape (Ex parte Sabbagh), the claim recited "kidney shaped shield" and the drawings depicted a shape which suggested a kidney. (See Applicant's Fig. 1 below.)

The Applicant argued that "a kidney-shaped object generally is round or oval and indented at one side like a kidney organ or a kidney bean," and provided images of a kidney organ and a kidney bean. However, the Board found that the shapes were different: 

After comparing the shape of Appellant’s claimed shield body (as per Figure 1 of Appellant’s Drawings) with the examples provided by Appellant of kidney-shaped objects (as per Figures 1A and 1B of the  Amendment), we do not find that Appellant’s illustrated oral shield 100 is kidney-shaped ...

One case involved an inconsistency between a claim limitation and the teachings of the spec. The claim in Ex parte LaSalle recited "a support structure ... not providing resistance to the opposed clamping forces." But the Board found that the description of the support structure, and the structure's interaction with the other claim elements, "must inherently result in the support structure providing some amount of resistance to the force." The Board affirmed the indefiniteness rejection because of this inconsistency between spec and claims.

Another case involved a claim that was internally inconsistent. The claim in Ex parte Choe recited "a heat resistant layer formed on the surface of the cover heater" and "a reflective layer between the cover heater and the heat-resistant layer." The Board found that the plain language of the first limitation required the heat resistant layer to be in surface-to-surface contact with the cover heater. However, the Board also found that this requirement contradicted the plain language of the second limitation ("layer between"). The Board entered a new ground of rejection under § 112, 2nd paragraph holding that the claim was "inherently inconsistent with [itself] and with the descriptions, definitions, and examples appearing in Appellants’ Specification."

My two cents: I don't think I've ever seen this sort of rejection before. In my experience, when the Examiner thinks the claims don't match the spec, the result is a rejection under  § 112, 1st. 

In all the cases discussed above, the BPAI cites to In re Cohn, which is really about inconsistency claim limitation and the teachings of the spec.

As used and defined in the specification, and unmodified by other terminology, an "opaque finish" is a flat-appearing finish which is not obtained when an alkali metal silicate is used as a sealant.... The claims, on the other hand, specifically call for sealing the oxide surface with an alkali silicate in order to ultimately obtain an "opaque appearance."
In re Cohn, 438, F.2d 939, 993 (CCPA 1971)

Of the four cases discussed above, In re Cohn seems on point for two of them. In re Cohn seems clearly on point for the the layer case (Choe), and still on point for the support structure case (Salazar). But I'm not convinced that In re Cohn really speaks to the banana case (Sazy) or the kidney case (Sabbagh).