Appeal No. 97-4151
Application 08/379,181
use of the term “comprising”. The use of this term, rather
than “consisting of”, renders the Markush groups recited in
these claims indefinite, in that their scope is unrestricted.
See Ex parte Morrell, 100 USPQ 317, 319 (Bd. Apps. 1953) and
MPEP
§ 2173.05(h). Likewise, the expression “may be selected from”
in claims 9, 10 and 19 is indefinite in that it indicates the
materials recited are merely exemplary, and therefore does not
define the metes and bounds of the claimed subject matter. Ex
parte Hasche, 86 USPQ 481, 482 (Bd. Apps 1949).
(II) Claims 7 and 17 are rejected for failing to comply
with the first paragraph of 35 USC § 112. These claims,
ultimately dependent on claims 1 and 11, respectively, each
recite (emphasis added) “The invention of [the parent claim]
further including at least two removable compartments . . . .
”. Since parent claims 1 and 11 have been amended to recite a
removable compartment, the recitation in claims 7 and 17 of an
organizer “further including”
at least two removable compartments would result in an
organizer having at least three removable compartments.
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