Appeal No. 96-4139
Application 08/142,276
The reference applied in the final rejection is:
Chevalier 4,863,428 Sep. 05, 1989
Claims 1 to 5 stand finally rejected on the following
grounds:
(1) Failure to comply with 35 USC § 112, second paragraph;
(2) Anticipated by Chevalier, under 35 USC § 102(b).
Rejection (1)
With regard to claim 1, the examiner states (answer,
page 3):
Claim 1 is indefinite because various elements of the
hypodermic needle have not been positively recited in
the claim. For example, the base portion, the hollow
shaft portion, and the tip or extremity portion have
all been recited in the preamble of the claim. Such a
recitation provides antecedent basis for these
elements; however, further limitations are then claimed
in the body of the claim which are improper.
The test for compliance with the second paragraph of 35
USC § 112 is whether the claim language, when read by a person
of ordinary skill in the art in light of the specification,
describes the subject matter with sufficient precision that the
bounds of the claimed subject matter are distinct. In re Merat,
519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975). In the
present case, claim 1 recites a hypodermic needle "having at
2
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