Appeal No. 97-2227
Application 08/254,978
fourth . . .” (footnote added), the artisan would interpret
“can shift automatically” to be -- shifts automatically --.
Since we are not of the opinion that claims 1-9, 12 and
13 are indefinite for the reasons stated by the examiner, we
will not sustain the rejection of these claims under 35 U.S.C.
§ 112, second paragraph.
Turning to the rejections of claims 1-13 under 35 U.S.C.
§ 103, for reasons stated infra in our new rejection under the
provisions of 37 CFR 1.196(b), we are of the opinion that
claims 9-13 fail to satisfy the requirements of 35 U.S.C. 112,
second paragraph. We note that normally a claim which fails
to comply with the second paragraph of § 112 will not be
analyzed as to whether it is patentable over the prior art
since to do so would of necessity require speculation with
regard to the metes and bounds of the claimed subject matter.
See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96
(CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). In this
operating lever 108), an interchange to a different gear ratio may be
accomplished by simply reversing the direction of shaft rotation.
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007