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the examiner then rejected the withdrawn claims under 35 U.S.C.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withdrawn from further consideration by the examiner as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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