Appeal No. 2000-0920
Application No. 08/829,034
the absence of any other argument in favor of the patentability
of claims 10, 37 and 38, the standing rejection thereof based on
Holt in view of Hirayama will be sustained.
Claim 18 depends from claim 11 and therefore requires, among
other things, that the bone implant be fabricated from an FDA
approved cermet. Because, for the reasons explained infra, we
cannot understand precisely what is meant by the terminology
“fabricated from an FDA approved cermet,” we are once again
constrained to reverse the examiner’s rejection of this claims as
being unpatentable over the applied prior art. See Steele,
305 F.2d at 862, 134 USPQ at 295 and Wilson, 424 F.2d at 1385,
165 USPQ at 496.
New ground of rejection pursuant to 37 CFR § 1.196(b).
Claims 11-18 are rejected under 35 U.S.C. § 112, second
paragraph, because the meaning of the term “an FDA approved
cermet” appearing in claim 11 is not clear.
The purpose of the second paragraph of Section 112 is to
provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims of a patent, with
adequate notice demanded by due process of law, so that they may
more readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement
14
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007