Appeal No. 96-0113
Application 07/848,779
As for claim 18, the examiner is also erroneous in finding
that the claim is vague and indefinite. On page 3 of the
examiner's answer, it is stated:
Claim 18 is rejected under 35 USC 112, second
paragraph, as being incomplete for omitting essential
steps, such omission amounting to a gap between the
steps. See MPEP § 706.03(f).
The above-quoted statement of the examiner fails to
adequately set forth the basis of his finding that claim 18 is
"incomplete for omitting essential steps." What is incomplete?
Which essential steps have been omitted? Why are they essential?
Absent such information, it cannot be said that the examiner has
made out a prima facie case that claim 18 is vague and
indefinite. On page 5 of the answer, when responding to the
appellant's arguments, the examiner provided the following
explanation:
The claim is totally functional for the reasons that
the claim recites "A method for . . . . ". Other than
the for use function, there is no method step recited
in the claim.
Thus, it appears that the examiner is not really of the view that
certain particular or specific steps known to the examiner have
been omitted from the claim. He does not indicate what are the
so called missing steps. Rather, the examiner finds that claim
18 as a method claim actually includes "no" method step.
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