Ex parte MONTI et al. - Page 5

              Appeal No. 95-3917                                                                                                                          
              Application 07/861,144                                                                                                                      

                       In claim 1, line 1 recites that the circuit has "a trimmable passive circuit component", while line 8                              
                       recites a "network" that defines "the terminals of the passive circuit component".  It is not                                      
                       understood how this is possible.  Line 1 clearly claims a "passive circuit component", which would                                 
                       be understood to be a distinct element.  It is not seen how a "network" can define "the terminals"                                 
                       of another distinct element.  Also, the term "network" only describes the arrangement of circuit                                   
                       elements.  However, just claiming "a network" does not set forth any elements within the claimed                                   
                       "integrated circuit".                                                                                                              

              The examiner appreciates that "clearly the 'network' is the 'passive circuit component'" (Final Rejection,                                  

              page 2).  Since it is clear to the examiner, and clear to us, that the "network" is the "passive circuit                                    

              component" and that "a first node and a second node defining the terminals of the passive circuit                                           

              component" in claim 1 refer to the terminals of the network, not another distinct element, the claim is not                                 

              indefinite for this reason.  Similar rationale by the examiner with respect to claims 8 and 14 is also                                      

              nonpersuasive:  it is clearly the "network" that is being adjusted to a target value.                                                       

                       As to the claims not setting forth any elements within the "integrated circuit," this does not make the                            

              claim indefinite, since the claim is directed to only the details of the passive circuit component.  The                                    

              examiner must have seen many claims of this form; e.g., "a television receiver having an oscillator circuit                                 

              comprising . . .," where the claim just recites the details of the oscillator circuit.  The "integrated circuit" sets                       

              the generic environment for the passive circuit component; for this reason, the examiner should also                                        

              seriously consider withdrawing the objection to the drawings.                                                                               

                       We have considered the examiner's reasons with respect to claim 20, but are not convinced that                                     

              there is any problem which renders the claim indefinite.  The preamble statement that the method is "for                                    

              trimming" is not mutually exclusive with the body of the claim starting out with fabrication of an integrated                               

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