Appeal No. 97-1974
Application 08/286,696
Rejection (1)
The rejection of claims 5 to 8 under 35 USC § 112, second
paragraph, is based on the examiner's finding that "it is not
clear if applicant [sic] is claiming the 'clay flowerpot
holder' in combination with the saucer holder" (answer, pp. 3
to 4). We
consider this rejection to be well taken. A claim is
indefinite if it does not reasonably apprise those of skill in
the art of its scope. In re Warmerdam, supra. Regardless of
whether claim 5 is in Jepson form (i.e., as provided in 37 CFR
§ 1.75(e)), as argued by appellants at page 18 of their brief,
its scope is indefinite in that one of ordinary skill could
not readily determine whether the recited "a clay flowerpot
holder" constitutes a part of the apparatus which the claim is
intended to cover, or is merely a point of reference for the
positions of the saucer holder. Appellants' argument that
"Everything recited in claim 5 is claimed but the claim
specifies the improvement" begs the question of whether or not
the "clay flowerpot holder" is an element of the claimed
4
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