Appeal No. 97-1119
Application 08/285,219
thereon, do not comply with the second paragraph of § 112.
Claim 19 (and its dependent claim 20) are also not in
compliance with § 112, second paragraph, in that the recitation
in claim 19 that the space-based platform has a large aspect
ratio is a double recitation of a limitation already specified in
claim 16 (line 3), which is the parent of claim 19's parent
claim, claim 18. Since 35 USC § 112, fourth paragraph, requires
that a dependent claim "specify a further limitation of the
subject matter claimed", claim 19's failure to recite any
limitation not already included in parent claim 18 renders it
indefinite.
Rejection Under 35 USC § 103
Although in some circumstances claims which do not comply
with 35 USC § 112, second paragraph, should not be rejected under
§ 103, see In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962), we believe that in the present case the indefinite-
ness of claims 16 to 22 is not such that the rejection under
§ 103 may not still be considered on its merits. Cf. Ex parte
Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993).
The examiner states the basis for the rejection as (answer,
pages 3 to 4):
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