Appeal No. 95-3114
Application 08/051,800
the examiner's requiring the election of species in the first
place, and as such, addresses a matter which is not within our
jurisdiction. In re Watkinson, 900 F.2d 230, 233, 14 USPQ2d
1407, 1409 (Fed. Cir. 1990); In re Hengehold, 440 F.2d at 1404,
169 USPQ at 479-80. Our jurisdiction here is limited to deciding
the correctness of the § 112 rejection, i.e., whether claims 3 et
al. are readable on the elected species of Fig. 1. For the
reasons already discussed above, we conclude that they are not.
Moreover, even if Fig. 4 were somehow determined not to be new
matter, and part of the elected species, these claims would still
not be readable on it because the anchorage portion of Fig. 4 is
not “lamellar.”
Since claims 3, 5, 8, 9, 13, 14, 19, 23 and 24 are not
readable on the elected species, they are indefinite under the
rationale set forth in MPEP § 821, supra. The rejection of these
claims under 35 U.S.C. § 112, second paragraph, will therefore be
sustained.
Conclusion
The examiner's decision
(1) to reject claims 1, 6 and 21 under 35 U.S.C. § 102(b) is
reversed;
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