Appeal No. 2002-2319 Page 5
Application No. 09/129,197
In rejecting claim 19 as being indefinite, the examiner is concerned that (1)
“claim 19 makes the arm, elbow and hand positive limitations or integral components of
the claim, and these limitations are viewed as non-statutory subject matter,” (2) claim
19, in defining the panel as having a lesser length, in a relaxed state, than the length of
a patient’s arm from the elbow end to the portion of the hand, describes the invention in
terms of a particular user, thereby rendering it impossible to determine whether a
device falls within the scope of claim 19 until a particular user engages the device and
(3) since the particular points along the elbow end and the portion of the hand of the
patient at which the recited arm length are measured have not been provided in the
record, this length for each patient is uncertain (answer, pages 5-6). For the reasons
which follow, we do not share these concerns.
First, we note that claim 19 positively recites only a sling; claim 19 does not
recite a combination of a sling and an arm of a patient. Observing, as the examiner
does, that claim 19 recites the sling as being “applied over and supporting an arm of a
patient” and comprising a panel defining a trough “receiving and supporting the arm”
and a member which “engages a portion of the hand and limits relative movement of
the panel towards the elbow end,” we acknowledge that the claim, when read in a
vacuum, is somewhat ambiguous as to whether it is directed to the sling alone or a
combination of the sling and an arm of a patient. The definiteness of the language
employed in the claims, however, must be analyzed, not in a vacuum, but always in
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007