Appeal No. 2001-0258 Page 10
Application No. 08/821,978
available alternatives provided in the gaming machine is
required. Claim 34 is ambiguous as to whether the step of
exposing implicitly requires selection between two available
alternatives (related or unrelated) or merely recites a genus
including two species (related and unrelated). Reading claim 34
in light of the circumstances discussed above with regard to the
other independent claims and in light of appellants' arguments on
pages 16-21 of the brief6, we are unable to resolve this
ambiguity with any certainty.
For the foregoing reasons, we conclude that independent
claims 10, 17, 27 and 34, as well as claims 11-16, 18-26, 28-33
and 35-46 which depend therefrom, are indefinite.
CONCLUSION
To summarize, the examiner’s rejection of claims 10, 17 and
18 under the second paragraph of 35 U.S.C. § 112, second
paragraph, is sustained and denominated a new ground of rejection
pursuant to 37 CFR § 1.196(b). Additionally, a new rejection of
6 In this regard, we note that, in the event that appellants' claims are
amended to remove the above-noted ambiguity so as to be of a scope consistent
with the arguments on pages 16-21 of appellants' brief, such claims would not
appear to be supported by appellants' original disclosure. Accordingly, under
such circumstances, the examiner may wish to consider the appropriateness of a
written description requirement under 35 U.S.C. § 112, first paragraph.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007