Appeal No. 2000-0920
Application No. 08/829,034
circumstances, we consider that the meaning of the terminology an
“FDA approved cermet” appearing in claim 11 would be, at best,
difficult to determine with a reasonable degree of certainty,
thereby making it appropriate to reject claims 11-18 under 35
U.S.C. § 112, second paragraph.6
SUMMARY
The rejection of claims 11-18, under 35 U.S.C. § 112, first
paragraph, is affirmed.
The rejection of claims 8, 36 and 38, under 35 U.S.C. § 112,
second paragraph, is reversed.
The rejection of claims 1-9, 11-17 and 35-37, as being
anticipated by Holt or, in the alternative, as being obvious in
view of Holt is affirmed with respect to claims 1-9 and 35-37,
but is reversed with respect to claims 11-17 on procedural
grounds.
6Moreover, because appellant’s specification does not state
what cermets are FDA approved, thereby making it necessary to go
outside the specification to determine the scope of claims 11-18,
the terminology “fabricated from an FDA approved cermet” appears
to be a incorporation by reference of “essential material” that
does not comply with the guidelines set forth in the Manual of
Patent Examining Procedure § 608.01(p).
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