Appeal No. 97-2822
Application 08/455,900
Seewack 2,859,452 Nov. 11, 1958
Morris et al. (Morris) 3,362,425 Jan. 9, 1968
Emberson 4,943,100 July 24, 1990
Claims 5 and 9 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim that which appellant regards as
his invention. In the examiner's view (answer, page 4), the
claims are unclear as to the scope thereof. In this regard, it
is the examiner's position that
[t]he preambles call for a “method” but the
bodies appear to rely upon structural
features of a product for patentability.
Stated differently, claims 5 and 9 recite a
method which as understood should define a
process including novel and unobvious steps.
To the contrary, appellant argues at pages
11-12 of the brief that his method claims are
patentable because of the specific product
being manipulated by the otherwise
unpatentable process steps. In any event,
the preamble of claim 6 clearly reflects the
intended scope of claim 5.
In addition to the foregoing rejection, the appealed
claims stand rejected under 35 U.S.C. § 102 and § 103 as follows:
a) claims 10, 11 and 16 under § 102(b) as being
anticipated by Emberson;
b) claims 10, 11, 13, 14 and 16 under § 103 as being
unpatentable over Emberson;
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