Appeal No. 97-1646
Application 08/080,890
latter two means might be more positively recited, the claim
requires all three means, and therefore we do not consider that
it amounts to a “single means” claim.4
Rejection (2)
The basis of this rejection is fully set forth on pages 6
and 7 of the examiner’s answer. Appellants argue that (brief,
pages 7 to 8):5
Costarelli nether explicitly or implicitly suggests
such a [remote positioning] device and to expect
someone to examine the food art to find a reference
[Lamb] which at the very best discloses a quasi remote
controlled device for loading material for cutting is
neither fair, just or within the law.
To the extent that this may constitute an argument that Lamb is
nonanalogous art, we do not agree. Even if Lamb may not satisfy
the first part of the two-part test set forth in In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979), it satisfies the
second part in that it is reasonably pertinent to the particular
problem with which the inventor was involved.
4We also note that it has been held that a single means
claim is properly rejected under the first paragraph of § 112,
rather than the second paragraph. In re Hyatt, 708 F.2d 712,
714, 218 USPQ 195, 197 (Fed. Cir. 1983).
5All references herein to appellants’ brief are to the
brief filed on May 2, 1996 (Paper No. 15).
6
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