Appeal No. 97-0972
Application 08/399,571
the preamble of claims 1 and 6, lines 1-7 and claim 10,
lines 1-6, clearly indicates that a subcombination is
claimed. This presents no problem as long as the body
of the claim also refers to the seat member and armrest
assembly functionally, such as, “adapted to extend in
between a seat member and an armrest assembly” or “for
attachment to a seat member and an armrest assembly.”
The problem arises when the seat member and
armrest assembly are positively recited within the body
of the claim, such as “an elongated member . . .
configured to engage said armrest assembly and . . .
configured to engage at least one said seat member.”
In this case there is an inconsistency within the
claim. The preamble indicates subcombination, while in
the body of the claim there is a positive recital of
structure indicating that the combination of a theater
seat hold-down device, a seat member, and an armrest
assembly are being claimed. [ Final rejection, pages 2
and 3.]
We do not agree with the examiner’s position. The examiner
apparently recognizes that the appellants, by setting forth
functional recitations such as that of the hold-down device being
“adapted” to engage the theater seat, have not positively recited
the theater seat as a part of the claimed combination.
Nevertheless, the examiner has taken the position that
limitations such as that of the of hold-down device being
“configured” (i.e, shaped) to engage a portion of a theater seat
(previously set forth in the preamble), positively claim the
theater seat as part of the claimed combination. We must point
out, however, that by reciting such language the appellants have
merely defined the hold-down member in terms of attributes it
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