Appeal No. 95-1859
Application 08/055,100
sheets and has claimed his discovery, as he must, in the form
of a new and unobvious process.
For the reasons given, we reverse the prior art rejection
made by the examiner.
C. New ground of rejection and recommendation
Claim 3 is rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the invention. Claim 3 contains the phrase "Teslin
brand synthetic paper." TESLINŽ is a registered trademark.
Where a trademark is used in a claim as a limitation to
identify a material, the claim does not comply with the
requirements of 35 U.S.C. § 112, second paragraph. See the
rationale set out in Ex parte Simpson, 218 USPQ 1020, 1021-22
(Bd. App. 1982).
In accordance with 37 CFR § 1.196(c), we recommend that
the applicant amend claim 3 by replacing the phrase "Teslin
brand synthetic paper" with the language "microporous plastic
sheet" (specification, page 2, lines 15-16), and if such
amendment is made our new ground of rejection under 37 CFR
§ 1.196(b) will have been overcome.
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