Appeal No. 96-2850
Application 08/015,400
With regard to the rejection of claim 2 under the second
paragraph of § 112, the examiner’s difficulty with the claim
language centers on the recitation that the foil on the
impression cylinder is chosen from a plurality of foils of
varying thickness. As discussed on the third and eighth pages
of the answer, the examiner’s position, in substance, is that
the recitation that the foil on the cylinder is chosen from
the claimed plurality of foils obscures the scope or metes and
bounds of the claimed subject matter in that it is unclear
whether the claim is limited to one foil or to a plurality of
foils.
Appellant has not expressly challenged the examiner’s
position as outlined supra. Instead, appellant’s only response
to the examiner’s rejection of claim 2 under the second
paragraph of § 112 is that “we [sic] do not recite a plurality
of foils as much as we [sic] recite the varying thickness of
the different foils.” This argument begs the question as to
whether claim 2 is limited to one foil or to a plurality of
foils. The fact that the claim may refer to a “varying
thickness” does not detract from the fact the claim explicitly
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