Appeal No. 1999-0956
Application No. 08/584,084
indefiniteness. In re Miller, 441 F.2d at 693, 169 USPQ at 600.
Another reason relied upon by the examiner in rejecting the
claims under 35 U.S.C. § 112, second paragraph, is that claims
are, in the examiner’s view, “incomplete” for omitting essential
elements or essential cooperative relationships of elements, such
omissions amounting to gaps between the elements and their
necessary structural connections. For example, the examiner
notes (answer, page 8) that claim 28 omits folding of the lagging
end section and middle section together along the second fold
line, which folding function the examiner considers to be
essential for producing card packages.
This reasoning is not persuasive because the examiner has
not established that the elements and/or cooperative
relationships omitted from the claim are regarded by appellants
as being essential to the invention. In this regard, the
specification may not be used as evidence that the scope of the
claims is inconsistent with the subject matter which appellants
regard as their invention. In re Ehrreich, 590 F.2d 902, 906,
200 USPQ 504, 508 (CCPA 1979). Also relevant is the following
statement of the court in In re Borkowski, 422 F.2d 904, 909, 164
USPQ 642, 645-46 (CCPA 1970):
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