Appeal No. 2003-0401
Application 09/490,954
over Hunt in view of Elrod, Palmer and either Benzinger or the
IBM Technical Disclosure Bulletin.
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner argues that it cannot be ascertained whether
the preamble language “body such as an aircraft” limits the body
to an aircraft (answer, pages 4-5 and 8-9).
As stated in the Manual of Patent Examining Procedure (MPEP)
§ 2173.02 (8th ed., rev. 1, Feb. 2003), “[t]he mere use of the
phrase ‘such as’ in the claim does not by itself render the claim
indefinite. Office policy is not to employ per se rules to make
technical rejections.” The same section of the MPEP indicates
that when an examiner rejects a claim on the ground that “such as
...” is vague and indefinite, the examiner should provide an
analysis as to why one of ordinary skill in the art would not
have been able to ascertain the meaning of the claim language in
light of the specification.
The examiner has merely relied upon a per se rule that “such
as” renders the claims indefinite. The examiner has not provided
a reason as to why the meaning of “body such as an aircraft”,
when interpreted in light of the specification, would not have
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007