Appeal No. 2003-1472
Application No. 09/606,955
With reference to claim 17, we appreciate that the claimed
functions for the “motor” and the “means for selectively changing”
overlap. In reviewing the indefiniteness issue raised by the
examiner, we consider that the word “motor” as used here is a broad
term that includes not only the electric motor itself (not shown),
but also sufficient ancillary structure (e.g., guiding structure
such as the track 62 and track follower 60) for effecting the
functions attributed to the “motor.”1 Since the “means for
selectively changing” of claim 17 also includes the track 62 and
the track follower 60,2 the terminology of claim 17 questioned by
the examiner is, in effect, a double recitation of structural
elements that are involved in each function. However, there is no
per se rule prohibiting a double recitation of structural elements
that are common to overlapping functions. See Palmer v. United
States, 423 F.2d, 316, 320, 163 USPQ 250, 253, adopted 165 USPQ 88
(Ct. Cl.), cert. denied, 400 U.S. 951 (1970) (“[D]ouble recitation
of elements of combination inventions does not necessarily render a
1Claim 17 states that the “motor” functions “for moving said
end during a first cutting stroke and during a first return
stroke, said end being movable along a first path of travel
relative to said housing during said first cutting stroke and
during said first return stroke . . . .”
2Claim 17 expressly states that the changing means “includes
a track and a track follower.”
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007