Ex parte SKOW et al. - Page 5

          Appeal No. 96-1883                                                          
          Application 08/078,380                                                      

          through opening 22 into the space between working surface 16 and            
          the bottom surface of the article being conveyed.                           
               We therefore will not sustain the rejection under 35 U.S.C.            
           112, first paragraph.                                                     
               All of the claims also stand rejected under 35 U.S.C.  112,           
          second paragraph, as being indefinite.  Here, the examiner's                
          position is that the terms angular, non-linear and stepped                  
               appear to contradict one another, in that a stepped                    
               path is clearly linear, comprising a plurality of                      
               usually rectilinear lines serially connected at usually                
               approximately right angles (Answer, sentence bridging                  
               pages 5 and 6).                                                        
          The comments we made above regarding these terms when discussing            
          the rejection under the first paragraph of Section 112 also are             
          relevant here.  The purpose of 35 U.S.C.  112, second paragraph,           
          is to insure that the public is apprised of exactly what the                
          patent covers, so that those who would approach the area                    
          circumscribed by the claims of a patent may more readily and                
          accurately determine the boundaries of protection involved and              
          evaluate the possibility of infringement and dominance.  See In             
          re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).             
          It is our view that the claims of the present application comply            
          with this requirement, and therefore we will not sustain the                
          rejection under the second paragraph of 35 U.S.C.  112.                    


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007