Appeal 2007-1671
Application 10/374,837
ANALYSIS
35 U.S.C. § 112, Second Paragraph Rejection
Claims 9-10 were rejected under 35 U.S.C. § 112, second paragraph because
according to the Examiner “the claims contain positive recital of limitations that
are deemed to constitute an unbased-comparison i.e., positively recited limitations
are being referenced to non-positively recited limitations to define the metes and
bounds of the cited dependent claims.” (Final Office Action 2.)
We cannot sustain the 35 U.S.C. § 112, second paragraph rejection because
the use of the word “the” to reference “bezel” and “chassis” in dependent claims 9
and 10 is consistent with the provisions of 35 U.S.C. § 112, second paragraph.
First, we agree with the Examiner (Answer 3) that the bezel is not positively
recited in claim 8 and is not part of the claimed combination. However, the use of
“the” to reference “bezel” in the dependent claims 9 and 10 is necessary because if
an indefinite article were to be used instead of “the”, then this would cause
confusion inconsistent with the Specification because it would suggest that there
are other, if not plural other bezels, that connect to the chassis, which is not what
the disclosure describes.
Second, we find that the term “chassis”, initially recited in the preamble, is
thereafter fully incorporated into the body of the claim so as to breathe life and
breath into it by setting forth the complete combination. See, e.g., Rowe v. Dror,
112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); Corning Glass Works
v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
8
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