Appeal No. 97-1177
Application 08/368,026
and distinctly claim the subject matter which appellants regard as their invention, for the
following reasons:
(1) A number of terms lack antecedent basis in the claims: “said water rinsing
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system” (claim 1, line 4; claim 8, line 1; claim 9, line 1; claim 10, line 4); “said infrared
sensor” (claim 1, line 22); “said urinal” (claim 15, lines 3 and 5); “said predetermined
levels” (claim 19, lines 4, 7 and 20).
(2) The examiner found claim 1 to be indefinite because it was unclear whether
the “water flow control means” (line 2) and “water rinsing device” (lines 2 and 3) were
intended to be part of the claimed combination (answer, page 5). Looking at claim 1 in
isolation, we consider that since these elements are recited in the preamble of the
claim, it might well be assumed that they are not claimed. However, each of dependent
claims 6, 8 and 9 contains only limitations relating to the preamble of claim 1; for
example, claim 8 defines the water rinsing system [sic] as a faucet. Since a dependent
claim must further limit a claim from which it depends, see 37 CFR § 1.75(c) and Ex
parte Hansen, 99 USPQ 319, 321 (Bd. App. 1953), the existence of claims 6, 8 and 9
would seem to indicate that the elements recited in the preamble of claim 1 do form a
part of the combination claimed. This lack of precision as to the scope of claim 1
causes it to be indefinite. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
3All references herein to particular lines of claims are to the claims as
reproduced in the appendix to appellants’ brief.
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