Ex parte SHAW et al. - Page 5




                 Appeal No. 97-2483                                                                                                                     
                 Application 08/575,830                                                                                                                 


                 of the claim to which it refers.” 35 U.S.C. § 112, fourth                                                                              
                 paragraph.                                                                                                                             




                               For the foregoing reasons, claim 7 does not define the                                                                   
                 metes and bounds of the invention with a reasonable degree of                                                                          
                 precision as required in Venezia. We will therefore sustain                                                                            
                 the rejection of claim 7 under the second paragraph of § 112.                                                                          


                               With regard to the § 102(b) rejection of claims 1 and                                                                    
                 4, the only arguments supporting patentability of these claims                                                                         
                 as set forth on page 12 of brief are as follows:3                                                                                      


                                   In view of above citations, the disclosure in                                                                        
                               the patent of Grote, should be compared to the                                                                           
                               claims 1 and 4 of this present application.                                                                              
                                                                     TABLE 1                                                                            
                               GROTE DISCLOSES                                  APPLICATION CLAIMS                                                      
                               (see G1 et seq.)                        (CLAIMS 1 & 4)                                                                   
                 Col. 1, lines 30-33; -tool                                     No resilient member                                                     


                          3    The shape of the housing recited in claim 1 has not been argued as a                                                     
                 difference over the Grote patent. In any event, this limitation, when given its broadest                                               
                 reasonable interpretation, does not distinguish from Grote.                                                                            
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