Appeal No. 2007-0441
Reissue Application 10/155,945
Patent 5,311,959
1
2 Claim 1 of the reissue application, which is the claim before us, reads
3 as follows (underlined material added to patent claim 1 and bracketed matter
4 with strikeout deleted from patent claim 1—see 37 C.F.R. § 1.173(d)
5 (2006)):
6 A mine tool roof bit insert having two flat parallel sides extending in
7 the long dimension of the insert and having two uppermost slanted
8 surfaces extending between said two flat parallel sides, the insert
9 having a trough at the top thereof having a length that extends from
10 one of said to flat parallel sides to the other of said two flat parallel
11 sides [the trough and the two uppermost slanted surfaces being
12 substantially parallel and substantially orthogonal along their entire
13 length to the two flat parallel sides,] said trough along said entire
14 length being substantially orthogonal to said two flat parallel sides,
15 the trough being between the two uppermost slanted surfaces.
16
17 While the issue of whether a claim is indefinite is a question of law,
18 nevertheless as a matter of fact, both the Applicant and the Examiner now agree
19 that claim 1 of the patent is indefinite.
20 For example on page 5 of the Appeal Brief of 23 January 2004, the applicant
21 states:
22 The added language set out in the Examiner’s
23 Amendment fails to particularly point out and distinctly
24 claim the invention. The trough cannot be both
25 substantially parallel and substantially orthogonal to the
26 two flat parallel sides. These directional orientations of
27 the trough are directly opposed to each other.
28
7
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