Appeal No. 1997-0538
Application No. 08/262,168
the full exposition thereof. For the reasons set forth below,
we will sustain only the examiner’s decision rejecting claims
8, 13 and 19 under 35 U.S.C. § 102 (a) and (e) based on Kim
and Larsen, respectively and claims 1 through 4, 7, 8, 13 and
19 under 35 U.S.C. § 103 over Kim. We will not sustain the
examiner’s decision rejecting claims 13 and 19 under 35 U.S.C.
§ 112, second paragraph, and claims 1 through 7, 9 through 12
and 14 through 18 under 35 U.S.C. § 103 over Larsen.
Section 112, Second Paragraph, Rejection
The examiner has rejected claims 13 and 19 under 35
U.S.C.
§ 112, second paragraph. See Answer, page 3. According to
the examiner (Answer, page 3):
The above claims are indefinite because they all
claim identical subject matter, since the only
differences in the claims are methods of
manufacture, and appellant has [sic, appellants
have] provided no evidence, in proper declaration
form, that the final products are different from one
another.
However, even were we to agree with the examiner that claims
13 and 19 “all claim identical subject matter”, that fact
alone does not render the claims indefinite. The examiner
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