Ex parte ARVIDSSON - Page 14




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


          the examiner's requiring the election of species in the first               
          place, and as such, addresses a matter which is not within our              
          jurisdiction.  In re Watkinson, 900 F.2d 230, 233, 14 USPQ2d                
          1407, 1409 (Fed. Cir. 1990); In re Hengehold, 440 F.2d at 1404,             
          169 USPQ at 479-80.  Our jurisdiction here is limited to deciding           
          the correctness of the  112 rejection, i.e., whether claims 3 et           
          al. are readable on the elected species of Fig. 1.  For the                 
          reasons already discussed above, we conclude that they are not.             
          Moreover, even if Fig. 4 were somehow determined not to be new              
          matter, and part of the elected species, these claims would still           
          not be readable on it because the anchorage portion of Fig. 4 is            
          not “lamellar.”                                                             
               Since claims 3, 5, 8, 9, 13, 14, 19, 23 and 24 are not                 
          readable on the elected species, they are indefinite under the              
          rationale set forth in MPEP  821, supra.  The rejection of these           
          claims under 35 U.S.C.  112, second paragraph, will therefore be           
          sustained.                                                                  
          Conclusion                                                                  
               The examiner's decision                                                
          (1) to reject claims 1, 6 and 21 under 35 U.S.C.  102(b) is                
          reversed;                                                                   



                                          14                                          





Page:  Previous  7  8  9  10  11  12  13  14  15  16  17  18  19  20  21  Next 

Last modified: November 3, 2007