Ex parte OHIRA - Page 12




          Appeal No. 1999-0608                                      Page 12           
          Application No. 08/571,471                                                  


               Pursuant to the provisions of 37 CFR § 1.196(b), we enter              
          the following new grounds of rejection:                                     
          1.   Claims 1 through 3 are rejected under 35 U.S.C. § 112,                 
          second paragraph, as being indefinite for failing to                        
          particularly point out and distinctly claim the subject matter              
          which appellant regards as the invention.                                   
               As discussed above and incorporated herein, our review of              
          the appellant's specification leads us to conclude that one of              
          ordinary skill in the art would not be able to understand the               
          metes and bounds of the terminology "substantially polyimide"               
          in independent claim 1.  As claims 2 and 3 depend from claim 1              
          and thus incorporate all of the limitations therein, these                  
          claims are likewise indefinite.                                             
          2.   Claims 1 through 3 are rejected under 35 U.S.C. § 103 as               
          being unpatentable over the admitted prior art of Figure 1 as               
          described on page 1, third paragraph, of the appellant's                    
          specification in view of Manwiller and Moriguchi.                           
               According to Figure 1 and page 1 of the appellant's                    
          specification, a conventional, or prior art, dental hand-piece              
          comprises a rolling bearing assembly (2), including a retainer              
          (1) disposed between inner and outer members, for rotatably                 







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