Ex parte SIMPSON - Page 13




          Appeal No. 96-2535                                                          
          Application 08/028,473                                                      


               Claims 14 and 20 are rejected under 35 U.S.C. § 112,                   
          second paragraph, for failing to particularly point out and                 
          distinctly claim the subject matter applicant regards as the                
          invention.  Claim 14 calls for a coating of polycrystalline                 
          diamond that has reduced resistance to wear in its exterior                 
          surface region.  The specific wording of the claim would have               
          raised in the mind of one of ordinary skill what the reduced                
          resistance to wear of the coating is measured relative to.                  
          The claim gives no indication, inasmuch as no underlying layer              
          or other structure of differing morphology is recited.  Under               
          these circumstances it is impossible to determine the metes                 
          and bounds of claim 14 and claim 20 dependent thereon.                      
          Accordingly, a rejection under                                              
          35 U.S.C. § 112, second paragraph, is proper.                               
                                       SUMMARY                                        
               The rejection of claims 1, 13, and 19 under 35 U.S.C. §                
          112, first paragraph, has been reversed.                                    
               The rejection of claims 1 through 13 and 19 under 35                   
          U.S.C.                                                                      
          § 112, second paragraph, has been reversed.                                 


                                         13                                           





Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007