Appeal No. 98-0024
Application 08/467,306
that the outer tube's former two longitudinal edges are "fused
into a unitary continuous said outer tube", while part (f) of
these claims recites that the outer tube is "longitudinally
divided along a line to have said two longitudinal edges".
According to the examiner (answer, page 7):
step [sic: part] (f) is describing features of
the outer tube which are known prior to the
sealing of the longitudinal edges but are not
actual features of the outer tube once it is in
its final sealed state as set forth by step
[sic: part] (a). Therefore, appellant [sic] has
created an indefinite situation where two states
of the outer layer are occurring in the same
claim and the metes and bounds of the claim
cannot be determined when it is not known in
what form appellant [sic] is intending to claim
the apparatus.
The test for compliance with the second paragraph of §
112 is stated in In re Merat, 519 F.2d 1390, 1396, 186 USPQ
471, 476 (CCPA 1975), as:
whether the claim language when read by a
person of ordinary skill in the art in
light of the specification, describes the
subject matter with sufficient precision
that the bounds of the claimed subject
matter are distinct.
In the present case, while the language of part (f) might be
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