Appeal No. 1998-2043
Application No. 08/606,601
setting forth any essential subject matter. Further, the claim sets forth the metes and
bounds of the invention with a reasonable degree of precision and particularly. We
therefore do not sustain the rejection of claims 7-10 under 35 U.S.C. § 112, second
paragraph.
We next turn to the rejection of claims 1-10 under 35 U.S.C. § 112, second
paragraph. According to the examiner, claim 1 is “incomplete and indefinite” because it
fails to recite the structures that provide the actions recited in the “wherein” clause. “The
guide members by themselves do not provide the listed results.” (Final Rejection, page 4.)
Appellants respond (Brief, page 13) that the rejection is deemed to be in error “[f]or
the same reasons above addressing the rejection of claim 1 in Issue 1....” However, a
review of the arguments presented with respect to claim 1 in “Issue 1" (Brief, pages 5-9)
reveals that those arguments are directed to the question of enablement of the subject
matter of claim 1. Indeed, “Issue 1,” as set forth on pages 4 and 5 of the Brief, is clearly
recognized by appellants as arising from the rejection of claims 1-10 under 35 U.S.C. §
112, first paragraph for lack of enabling disclosure. Appellants’ position is thus not
responsive to the rejection made under the second paragraph of the statute, which
concerns whether the claims particularly point out and distinctly claim the relevant subject
matter, rather than whether the disclosure enables one skilled in the art to make and use
appellants’ invention.
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