Appeal No. 95-3900 Page 10
Application No. 07/978,030
us what Appellants intend by this method of making. The
specification teaches a cutting process (Paper 1 at 13;
Fig. 5) and a press-molding process (Paper 1 at 13; Fig. 8),
but it does not teach the use of both together. We suspect
that Appellants did not intend for claim 4 to depend from
claim 3, but it has done so since it was originally filed and
we must take the claims as we find them. Consequently, we
will reverse the rejection of claim 4 pro forma, not because
it is necessarily wrong, but because the claim is so unclear
as to make a proper application of art impossible. In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962);
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970).
NEW GROUND OF REJECTION
We reject claim 4 as indefinite under 35 U.S.C. § 112[2].
As noted above, claim 4 requires both press forming and
machining to form the cavities on the lower plate. The
specification does not teach this combination of process steps
except in original claim 4, nor can we discern how these steps
are related. The cutting process of Figure 5 and the press
forming of Figure 8 (Paper 1 at 13) appear to be incompatible.
Appellants bear the burden of claiming as precisely as
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