Ex parte ARVIDSSON - Page 11




          Appeal No. 95-3114                                                          
          Application 08/051,800                                                      


          the examiner then rejected the withdrawn claims under 35 U.S.C.             
           112, second paragraph, in the supplemental examiner's answer              
          (Paper No. 33).                                                             
               After fully considering the arguments presented in the                 
          brief, reply brief, response to new grounds of rejection, reply             
          and further reply, as well as the three supplemental examiner's             
          answers, we conclude that the rejection is well taken.                      
               We will discuss claim 3 as being typical of rejected claims            
          3, 8, 13, 18 and 23; claims 5, 9, 14, 19 and 24 are dependent on            
          these claims, respectively.  Claim 3 reads:                                 





                    All claims that the examiner holds as not being                   
               directed to the elected subject matter should be                       
               withdrawn from further consideration by the examiner as                
               set forth in MPEP  809.02(c) and  821.01 through                     
                821.03.  As to one or more of such claims the                        
               applicant may traverse the examiner's holding that they                
               are not directed to the elected subject matter.  The                   
               propriety of this holding, if traversed, is appealable.                
               Thus, if the examiner adheres to his or her position                   
               after such traverse, he or she should reject the claims                
               to which the traverse applies on the ground that they                  
               are not directed to the elected subject matter.                        
               Because applicant believes the claims are readable on                  
               the elected invention and the examiner disagrees, the                  
               metes and bounds of the claim(s) cannot be readily                     
               ascertained, rendering the claim(s) vague and                          
               indefinite within the meaning of 35 U.S.C. 112, second                 
               paragraph.                                                             
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