Appeal No. 2006-0041 4
Application No. 10/037,377
OPINION
We reverse with respect to the rejection under 35 U.S.C. § 112, ¶ 2, but affirm
with respect to the rejections under 35 U.S.C. § 103(a). Our reasons follow.
A. Rejection under 35 U.S.C. 112, ¶ 2
The rejection of claims 1 and 13-15 as indefinite under 35 U.S.C. § 112, ¶ 2 is
based on the Examiner’s determination that, “the range of percentages of the coverage
Comment [COMMENT1]: I added a
restatement of the rejection to the
of the surface opposed to the body-faceable surface by the retainer flap is unclear.”
beginning of the sentence for clarity. I
prefer not to rely on the heading alone
to introduce the subject matter. I
(Answer, Pg. 3). This lack of clarity is due to what the Examiner perceives as an
changed “found” to “determine”
because the examiner’s statement
touches on the legal question of
inconsistency between two limitations found in the independent claims, i.e. the limitation
indefiniteness and is not purely a
factual finding.
“covering greater than about 40 percent” and the limitation “covers a portion.” (C.f.
Claim 15, lines 8-9 and 16-17). According to the Examiner:
[I]f the flap covers 100% of the surface as set forth on lines 8-9
than [sic; then] the flap covers more than just a portion of the baffle
as set forth on lines 16-17. Note also claims 19, 22, last two lines,
and 25 which set forth the range being less than 100%. In other
words, it is unclear whether 100% of the surface opposed to the
body faceable surface is covered by the retainer flap or only a
portion thereof.
(Answer, Pg. 3).
Comment [COMMENT2]: No
necessary. We are reverseing on a
According to 35 U.S.C. § 112, ¶ 2, "[t]he specification shall conclude with one or
different basis than argued by
appellant.
more claims particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention." The primary purpose of the definiteness
requirement is to ensure that the claims are written in such a way that they give notice
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