Appeal No. 96-2673
Application No. 07/851,887
that which appears in cancelled claim 5 (see 35 U,S.C
(sic, U.S.C.) 112, second paragraph, Board of Patent
Appeal rejection, page 9, mailed May 31/1994).
With respect to claims 29-31, still 112
rejection as noted by B.P.A. rejection, page (sic,
pages) 12-15. There is still a lack of consistency as
between the disclosure and the apparent subject matter
of claims 17 and 31. (see 35 U.S.C 112, Board of
Patent Appeals rejection, page 15, mailed May 31/1994).
The examiner has failed to establish indefiniteness in any
meaningful way to which appellant is able to respond. The
examiner has not pointed to any particular language in the claims
which the examiner regards as “indefinite” or inconsistent with
the disclosure. A general reference to various pages of this
Board’s previous decision of May 31, 1994 does not alleviate the
examiner of the burden to particularly point out what, exactly,
the examiner considers to be the offending claim language within
the meaning of 35 U.S.C. ' 112, second paragraph. It is
especially important for the examiner to be precise in
identifying the allegedly indefinite language here, rather than
merely point to a previous decision, because the instant claims
now on appeal differ, in some aspects, from the claims at issue
in that previous decision.
Moreover, to whatever extent the examiner’s rejection of
claims under 35 U.S.C. ' 112 might be considered initially
reasonable (and we do not so consider the rejection as being
reasonable since there is no explanation at all with regard to
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