Appeal No. 98-0194 Page 23
Application No. 08/132,940
Original claim 8 was rejected under 35 U.S.C. § 112,
second paragraph, in the second Office action (Paper No. 5,
mailed January 11, 1995) for the same reason which we have
reversed above. In an attempt to overcome this rejection, the
appellant amended claim 8 (Paper No. 7, filed April 27, 1995)
to add at the end thereof the phrase "in accord with the
feedback quantity to narrow the difference between the energy
calculations and the setting of the user control." We find
this "added phrase" to violate the first and second paragraphs
of 35 U.S.C. § 112 for the following reasons.6
The "added phrase" is indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention. In this regard,
we note that ther is no proper antecedent basis for "the
feedback quantity." Thus, it would be unclear to the artisan
which element the limitation is intended to refer. We note
that independent claim 1 recites "a feedback signal" not "a
6The deletion of the "added phrase" from claim 8 would
overcome this new ground of rejection.
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