Appeal No. 2000-1991
Application No. 08/587,417
with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate.
The examiner rejects claims 1, 5-10, 12-18 and 20-25 under
this ground of rejection on page 4 of the examiner’s answer. The
examiner asserts (id. at page 4) that “[o]ne of ordinary skill in
the art would be unable to determine the meets [sic, metes] and
bounds of ‘substantial’ in these contexts [referring to the words
“substantially” and “substantial” in claim 1, lines 7-9, and the
corresponding recitation in independent claim 23].” Appellants
argue (brief at page 17) that:
[t]he only basis provided by the Examiner in support of
the rejection is the conclusory statement that one of
ordinary skill in the art would be unable to determine
the meets [sic, metes] and bounds of “substantial” as
recited in the claims. Clearly, the Examiner is
attempting to shift the burden of proof back to
Appellants, which is not proper.
We agree with appellants that the examiner has not given any
explanation or support for the position that the claims do not
convey to an artisan the metes and bounds of the claims. Mere
allegation that the claims do not meet the requirements of metes
and bounds is not adequate to support the rejection. We find,
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