Ex Parte IMAMURA et al - Page 9



          Appeal No. 1997-0897                                                        
          Application No. 08/227,992                                 Page 9           

          the second paragraph of 35 U.S.C. § 112, when they define the               
          metes and bounds of a claimed invention with a reasonable degree            
          of precision and particularity.  See In re Venezia, 530 F.2d 956,           
          958, 189 USPQ 149, 151 (CCPA 1976).                                         
               The examiner asserts (answer, page 5) that claim 1 is                  
          incomplete because the claim recites a first transparent                    
          covering, which implies additional transparent coverings, but               
          that no additional transparent coverings are recited.  Appellants           
          point out (brief, page 23) that the second transparent covering             
          is recited in claim 2, which depends from claim 1.                          
               From our review of the claims, we find that claim 1 does not           
          require additional transparent coverings, and that the metes and            
          bounds of the claim would have been readily understood by one of            
          ordinary skill in the art for the reasons set forth by appellants           
          in the brief.  We make similar findings with respect to claims 3,           
          4, 20, and 21 for the same reasons.                                         
               The examiner further asserts (answer, page 5) that claims 2,           
          5, 15, 22, and 27 recite improper negative limitations e.g.,                
          “said first transparent covering is removed . . . and replaced”             
          (claim 2, lines 3-5).  The examiner asserts (answer, page 13)               
          that “The rejection is made because an essential element of the             







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