Appeal No. 98-0979 Page 8
Application No. 08/517,909
examiner of the claims on appeal. The examiner's statement of
this rejection is as follows:
Claims 1 through 20 are rejected under 35 U.S.C. § 112,
second paragraph, as being incomplete for omitting
essential steps, such omission amounting to a gap between
the steps. See MPEP § 2173.05(l). The omitted steps are
for example in claim 1, the steps required by one to
permit "a player to improve a rolled point". One cannot
perform the claimed invention since one cannot be certain
of the steps required. In short, one must look to [the]
patent specification and prosecution history since a
doubt exists as to scope of claims. With such doubt one
cannot clearly determine what applicant regards as his
invention. [answer, p. 3]
We agree with the appellants' argument (brief, pp. 9-13)
that the claims under appeal do fully apprise those of
ordinary skill in the art of the scope of the invention
claimed, and thus satisfy the requirement of 35 U.S.C. § 112,
second paragraph, to particularly point out and distinctly
claim the subject matter which the appellants regard as the
invention. In this regard, we note, as did the appellants,
that breadth of a claim is not to be equated with
indefiniteness. See In re Miller, 441 F.2d 689,, 169 USPQ 597
(CCPA 1971). Additionally, we see no basis for the examiner
to conclude that the claims are incomplete for omitting
essential steps. MPEP § 2173.05(l) cited by the examiner to
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