Appeal No. 96-1419
Application 08/081,971
paragraph of § 112, the examiner’s position is as follows:
Appellant’s recitation that “the mounting plate being
larger in area than the wing window” is generally vague
as such language is inconsistent with the preamble
which sets forth a “mirror mounting assembly” intended
for mounting on a wing window. The wing window is not
part of the claimed article (e.g. mirror assembly); and
to define a limitation of the claimed article (e.g. the
mounting plate of the mirror assembly) relative to an
unclaimed article (e.g. wing window) is vague and
indefinite. (answer, pages 3-4).
The examiner’s reasoning as quoted supra is untenable.
Merely reciting that the area of the mounting plate is larger
than some other element, namely a wing window, does not require
the window to be a positive element of the claimed combination in
order to satisfy the requirements in the second paragraph of
§ 112. It is sufficient that one of ordinary skill in the art
would understand this claim limitation to mean that the area of
the mounting plate is larger than the area of some appropriately
sized window which is not regarded as part of the claimed
combination. Claim 12 therefore defines the metes and bounds of
the claimed invention with a reasonable degree of precision to
satisfy the requirements in the second paragraph of § 112. See In
re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
For the foregoing reasons, we cannot sustain the rejection
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