Appeal No. 94-3284
Application 07/948,570
claims indefinite because the alternatives are not equivalent
(answer, pages 3 and 5). Appellant, on the other hand, asserts3
at page 3 of his brief that the language in question “simply
means, and can only be interpreted as, ‘at least one’ ceramic
layer,” and that “the Board has sanctioned such language,”
although no decision is cited in support of this statement.
The examiner does not cite any particular section of the
MPEP as a basis for his statement that a recitation of
alternatives is indefinite if they are not equivalent, and we
find none in § 2173.05(h), “Alternative Limitations.” To the 4
contrary in fact, part (b) of § 2173.05(h) states that
“[a]lternative expressions using ‘or’ are acceptable” (page 2100-
153).
A claim complies with the second paragraph of 35 U.S.C.
§ 112 if its language, when read by a person of ordinary skill in
the art in light of the specification, describes the subject
matter with sufficient precision that the bounds of the claimed
subject matter are distinct. In re Merat, 519 F.2d 1390, 1396,
3The examiner states in the supplement to the examiner’s
answer (Paper No. 16) that a second ground of rejection of the
claims under § 112, second paragraph, is eliminated in view of
the aforementioned Amendment Under 37 CFR 1.116.
4The discussion in part (a) of § 2173.05(h) concerning
Markush groups is of no relevance here.
-3-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007