Appeal No. 98-0003
Application No. 08/601,896
with the holder of claim 1. Similarly, a first possible4
interpretation of claim 17 is that it is directed to a holder
per se that is capable of being used with the support of claim
1. However, the “in a combination” language appearing in each
of the claims casts doubt on these interpretations and raises
the possibility that the claims are actually intended to cover
a support (or holder) in combination with a holder (or
support). Our uncertainty is compounded by appellant’s
statement on page 7 of the brief that claim 1 claims the
combination of the support and the holder, and that all other
claims depend therefrom.5,6
4This is apparently in accord with appellant’s
understanding of the scope of claim 16. See page 12 of the
brief.
5The exact quote is: “Applicant’s claim 1, upon which all
other claims depend, specifically claims the combination of
these two parts, the support and the holder . . . ” (brief,
page 7; emphasis added).
6Of course, if claims 16 and 17 are directed to,
respectively, a support per se and a holder per se, and if
they are dependent claims depending from claim 1, they are
improper dependent claims because they do not further limit
the subject matter of the claim from which they depend. See
35 U.S.C. § 112, fourth paragraph.
13
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