Appeal No. 99-0920
Application No. 08/629,323
well settled that a claim must accurately define the invention
in order to satisfy the requirements of the second paragraph
of section 112. In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ
486, 493 (CCPA 1973).
For the above stated reasons, we will sustain the
examiner’s section 112, second paragraph, rejection of claims
31 and 34.
However, we will not sustain the corresponding rejection
of claim 33 which recites that the curvilinear adhesive zones
of parent claim 20 “include at least two diametrically
opposite curvilinear portions”. According to the examiner,
this claim is indefinite because, “[w]hile two diametrically
opposed curvilinear portions could provide an annular zone,
they need not and it is unclear how this is any different from
an annular zone” (answer, page 12). This concern on the
examiner’s part is simply irrelevant to the claim under
review. This is because neither claim 33 nor its parent claim
20 recites “an annular zone”. From our perspective, claim 33
defines the appellants’ claimed invention with reasonable
precision and particularity notwithstanding the examiner’s
aforenoted position to the contrary.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007