Appeal No. 2001-0421
Application 08/926,835
See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96
(CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970).
RESPONSE TO THE SEPARATE OPINION
Our colleague states that we have acted “improperly and
irresponsibly” (slip op., page 33) by taking actions today which
he believes are “wholly inappropriate.” Slip Op., page 22. In
addition, our colleague accuses us of establishing a per se rule.
Slip Op., pages 31-32. We disagree.
As explained, the lack of positive steps in claim 1 renders
that claim indefinite under 35 U.S.C. § 112, second paragraph.
The court stated in Zletz, supra, “[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification
imposed.” This is exactly the outcome of the actions we take
today.
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007