Appeal No. 2006-1557 Παγε 11
Application No. 10/220,514
Moreover, to the extent that appellants (reply brief)
maintain that the “means for guiding” limitation5 of claim 20
requires that the “means for cutting” must be located at a
location corresponding to the claim 19 locations, we do not find
those arguments persuasive for the reasons set forth above with
5 Appellants do not argue that the “means for guiding” limitation of claim 20
requires structure that differentiates over Elger other than the argued (cutting) location
requirement as argued in the briefs. Consequently, we need not further develop the
record as to the scope of the “means” limitations of claim 20 in deciding this appeal
given the arguments and issues before us for review. However, in the event of further
prosecution of this subject matter before the examiner, the examiner should review the
means-plus-function limitations presented in the claims to determine if the full scope
thereof is reasonably determinable. This is especially so given that the original
application specification was provided without an accompanying drawing figure 1, as
referenced therein; that is, as part of the originally filed application. If the scope of the
affected claims is not determinable within the meaning of the second paragraph of
Section 112 and/or if support for the determined scope can not be found in the original
application, the introduction of rejections under the second and/or first paragraphs of §
112 should be considered, as may be appropriate.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007