Appeal No. 97-2148
Application 08/295,829
In explaining the 35 U.S.C. § 112, second paragraph,
rejection of these claims, the examiner makes the following
statement:
Claims 3, 5, 11 and 12 appear to be properly
rejected under office guidelines concerning
combination/subcombination claims. The combination [2]
of the nib unit and main nib is only positively claimed
in claims 8-10. The main nib is only recited in the
preamble in claim 1. [answer, page 4]
It thus appears that the examiner’s rejection is based on a
belief that the dependent claims do not pass muster under the
second paragraph of 35 U.S.C. § 112 because they do not place a
further limitation on the positively recited nib conversion unit.
While the second paragraph of 35 U.S.C. § 112 requires that
a claim must particularly point out and distinctly claim the
subject matter sought to be patented, it does not require the
claims to be in any particular form. In the present instance,
the examiner does not appear to have any difficulty understanding
the meaning of the claim language in question. Nor do we.
Instead, the examiner appears to take issue with the form of the
claims. However, in the absence of a clear explanation of how
the claim format results in a failure to particularly point out
2The examiner has not specifically identified, and it is
not apparent to us, what “office guidelines” he is relying on in
support of his position.
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