Appeal No. 2005-2663 Page 7
Application No. 10/140,323
subject matter permits.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1385, 231 USPQ 81, 94-95 (Fed. Cir. 1987).
Here, the phrases in question seem on their face to mean the same thing,
Appellant has stated on the record that they mean the same thing, and the examiner
has provided no reasoned basis on which to conclude that they mean different things.
The mere fact that the dependent claim uses slightly different phrasing to refer to the
same limitation does not automatically make the phrasing indefinite. The examiner has
not adequately explained why those skilled in the art would be unable to determine the
boundaries of claim 6 and we therefore reverse the rejection of that claim under 35
U.S.C. § 112, second paragraph.
The examiner also rejected claim 7 as indefinite. Claim 7 depends from claim 2
and adds the limitation that the condensation is determined via an algorithm that
implements a series of steps that are recited in pseudocode. The examiner reasoned
that “the method is directed to determining a condensation of the graph, which is
directed via its dependence from claim 2 to a recursive algorithm. G* is defined as the
condensation of graph G. However, claim 7 is vague and indefinite because the
algorithm of said claim via claim 2 does not result in the production of G*.” Examiner’s
Answer, page 4.
Appellant concedes that “the clarity of claim 7 can be improved by removing from
the preamble mention of producing condensation of the graph.” Appeal Brief, page 9.
Appellant submitted an amendment intended to accomplish this objective and overcome
the rejection. See the amendment received December 23, 2004. The examiner denied
entry of the amendment. See the Advisory Action mailed March 3, 2005.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007