Ex parte TROISI - Page 7




          Appeal No. 1997-4441                                                         
          Application 08/370,095                                                       

          are broad, not indefinite.  The rejection of apparatus                       
          claims 1, 3-6, and 11 is reversed.                                           
               Appellant argues that method claims 7 and 9 are                         
          definite because "products are acted upon (weighed) in the                   
          claimed method" (Br10).  We agree that the method claims are                 
          definite because "providing said weigh pan with a length in                  
          said direction of movement not substantially greater than a                  
          length of said products as measured in said direction of                     
          movement" (claim 7) states a definite relationship between the               
          lengths of the product and the weigh pan.  Because the method                
          acts on the product, the length limitation is not just a                     
          statement of intended use and it is necessary to show the                    
          claimed relationship between the lengths.  See In re Mills,                  
          916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990)                     
          ("While Mathis' apparatus may be capable of being modified to                
          run the way Mills' apparatus is claimed, there must be a                     
          suggestion or motivation in the reference to do so.").  We                   
          conclude that the method claims are definite.  The rejection                 
          of claims 7 and 9 is reversed.                                               


          35 U.S.C. § 103(a)                                                           

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