Ex parte MALIK et al. - Page 10




          Appeal No. 97-0677                                                          
          Application No. 08/312,710                                                  


          is positioned in a tangential plane "in close proximity" to the             
          tangential plane along the handling ring outer surface.  Absent             
          such guidelines, we are of the opinion that a skilled person                
          would not be able to determine the metes and bounds of the                  
          claimed invention with the precision required by the second                 
          paragraph of 35 U.S.C.  112.  See In re Hammack, supra.                    


               Since the appellants' specification fails to set forth an              
          adequate definition as to what is meant by the terminology "in              
          close proximity" recited in claim 1, the appellants have failed             
          to particularly point out and distinctly claim the invention as             
          required by the second paragraph of 35 U.S.C.  112.                        


          New ground of rejection                                                     
               Under the provisions of 37 CFR  1.196(b), we enter the                
          following new ground of rejection.                                          


               Claim 1 is rejected under 35 U.S.C.  112, second                      
          paragraph, as being indefinite for failing to particularly                  
          point out and distinctly claim the invention, for the reasons               
          explained above.                                                            
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