Appeal No. 96-2179 Page 21
Application 07/613,466
disclosure supports opposite measured responses to changes in
stress and pacing rate when one or the other is held constant,
these additional qualifications are missing from the claims.
We cannot incorporate into these claims the limitations
suggested by the specification. Consequently, the claims as
written encompass the paradoxical situation the examiner has
identified. (E.g., Paper 22 at 12.)
6. Appellants have not separately argued the
indefiniteness of claims 2-24 and 38-48, which depend from
claims 1 and 38, respectively, so we affirm their rejection as
indefinite as well.
7. Since claims 1-24 and 38-48 are indefinite with
respect to a contested limitation, we set aside the other
rejections of these claims as unripe for our determination.
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). This course is particularly appropriate in the
present case, where the respective contentions of the examiner
and Appellants depend so heavily on the divergent
interpretations of these claims. We thus reverse the
reference-based rejections of these claims pro forma.
8. With respect to claims 25 and 49, the examiner urges
that the meaning of "rate control parameter", "closed-loop
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: November 3, 2007