Appeal No. 97-3097
Application 08/030,488
Rejection Under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 10, 11, 13 and 14
are rejected for failure to comply with the second paragraph
of 35 U.S.C. § 112.
The test of whether a claim complies with § 112, second
paragraph, is
whether the claim language, when read by a person of
ordinary skill in the art in light of the
specification, describes the subject matter with
sufficient precision that the bounds of the claimed
subject matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA
1975). In the present case, claim 10 recites:
10. A method according to claim 9 wherein each container
displays a unique machine-readable identifying reference, such
as a bar-code.
The bounds of the subject matter claimed by this claim are not
distinct, because the expression “such as a bar code” makes it
unclear as to whether the claim covers (i) all “unique
machine-readable identifying reference[s],” (ii) only such
references as are in some way similar to a bar code, or (iii)
only a bar code. See Ex parte Steigerwald, 131 USPQ 74, 75
(Bd. App. 1961), and Ex parte Hall, 83 USPQ 38, 39 (Bd. App.
-8-
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