Appeal No. 97-2483
Application 08/575,830
With regard to the only other argument challenging the
rejection under the second paragraph of § 112, the issue is
not whether there is descriptive support for the subject
matter of claim 7 in the original disclosure. Instead, the
issue under the second paragraph of § 112 is whether claim 7
defines the metes and bounds of the invention with a
reasonable degree of precision. See In re Venezia, 530 F.2d
956, 958, 189 USPQ 149, 151 (CCPA 1976).
In the present case, it is not clear how the tool can
be limited to two channels (parent claim 2) and yet have no
more than one channel (dependent claim 7). The recitation in
claim 2 that the tool “comprises two channels” and the
recitation in claim 7 that the tool “comprises at least one
said channel,” and thus may have no more than one channel,
simply amounts to a contradiction of terms. In short, it is
not possible to have two channels, on the one hand, and yet
have no more than one channel, on the other hand. Furthermore,
dependent claim 7 cannot be viewed independently of claim 2
because, by statute, “[a] claim in dependent form shall be
construed to incorporate by reference all of the limitations
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007