Appeal No. 95-4344
Application 08/087,030
that this prior art end section bears in face-to-face contact at its end surfaces on the first main portion of
the immediately adjacent turn. Given the ambiguity of the reference in this regard, the examiner’s
conclusion that the combined teachings of Collom and the Chicago Metal Hose Corporation Catalog
would have suggested the subject matter recited in claim 18 is unsound, in essence because it is
necessarily based on speculation, unfounded assumptions and/or hindsight reconstruction.
Furthermore, this fundamental flaw in the basic prior art combination finds no cure in Fulton’s disclosure
of a helically wound exhaust conduit having a tapered discrete end section which does not even contact
the first main portion of the immediately adjacent turn.
This being the case, we shall not sustain the standing 35 U.S.C. § 103 rejections of independent
claim 18 or of claims 19 through 31 which depend therefrom.
The following rejections are entered pursuant to 37 CFR § 1.196(b).
Claims 18 through 20, 22 and 24 through 31 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject matter the appellants regard
as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In determining whether this standard is met, the
definiteness of the language employed in the claims must be analyzed, not in a vacuum, but always in
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007