Appeal No. 98-0024
Application 08/467,306
(f) simply referring, as appellants state on page 11 of their
brief, "to a physical characteristic of the outer tube and not
to a state of assembly."
The examiner further argues on pages 7 to 8 of the
answer:
Section (f) may indeed be describing a physical
attribute of the outer layer but does so in a
way that is describing the attribute when the
outer layer is in a different form from its
final state which is indefinite.
We do not agree. The fact that an element in a claim is
defined by a property or characteristic which it has when in a
different form from the form in which it is claimed does not
inherently render the claim indefinite. Cf. In re Miller, 441
F.2d 689, 691, 169 USPQ 597, 599 (CCPA 1971) (claim to powder
which recited unsintered flex strength, a property of preforms
made from the powder rather than of the powder itself, was not
indefinite). Here, although part (f) sets forth a
characteristic of the outer tube which it has when in a
different form than recited in part (a), there is compliance
with the second paragraph of § 112 since the bounds of the
claimed subject matter are distinct, as dis-cussed above.
In the final rejection, the examiner also found claims
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007