Appeal Number: 2006-3291
Application Number: 10/178,845
NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(B)
Pursuant to 37 CFR § 41.50(b), we enter the following new grounds of
rejection:
Claims 1, 2, 4-13, 22 and 24 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which the applicant regards as his invention.
More particularly, independent claim 1 has a limitation that no portion of the
concavity between the thoracic upper back portion and the bottom edge portion of
the claimed seat device presses against a part of the user below the belt when the
user is wearing a duty belt and sitting against the seat accessory in a normal seating
position. The height of this concavity is totally subjective to each individual
obviating any possibility of pointing out the scope of the claims with any degree of
particularity.
This being the case, whether [a seat] was covered by the claim would
be determined not on the basis of the structural elements and their
interrelationships, as set forth in the claim . . . . This would give rise to
an uncertainty in the interpretation of the claims, which we believe to
be exactly what the requirements of 35 USC 112, second paragraph,
seek to avoid.
Ex parte Brummer, 12 USPQ2d 1653, 1655 (Bd. Pat. App. & Inter. 1989)
(affirming a rejection under § 112, second paragraph, for a claim directed to a
bicycle designed for a rider because no evidence was made of record that a known
standard exists in the field of bicycle manufacturing for sizing a bicycle to a rider).
Also, reference to undefined standards, regardless of whose views might
influence the formation of those standards, fails to provide any direction to one
skilled in the art attempting to determine the scope of the claimed invention.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013