Appeal No. 95-1827
Application 07/816,157
examiner’s point, that the claimed recitation of an
electrically conductive medium as an element of an apparatus
“is material being worked upon by the apparatus” (answer, page
4), has no bearing on the issue of definiteness. In re
Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760.
For the foregoing reason, we conclude that the examiner
has failed to show that one of ordinary skill in the art would
not be reasonably apprised of the scope of appealed claim 23.
Accordingly, the rejection of claims 23 and 24 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The examiner has rejected claims 29-31 and 34 under 35
U.S.C. § 112, fourth paragraph, because of the same line of
reasoning, i.e., these claims only recite limitations of the
electrically conductive medium and thus do not further limit
the apparatus (answer, paragraph bridging pages 4-5).
However, the fourth paragraph of § 112 requires that a
dependent claim shall “specify a further limitation of the
subject matter claimed.” See 35 U.S.C. § 112, fourth
paragraph (1975). Whether or not the examiner believes the
electrically conductive medium is a limitation that affects
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