Ex parte FOX et al. - Page 5




          Appeal No. 95-2502                                                          
          Application No. 07/763,625                                                  

          that the claimed system includes the data bank and the                      
          knowledge base described on pages 32-34 of the specification.               
          Claim 20 therefore defines the metes and bounds of the                      
          invention with a reasonable degree of precision to satisfy the              
          test for definiteness in In re Venezia, 530 F.2d 956, 958, 189              
          USPQ 149, 151 (CCPA 1976).                                                  


               With regard to dependent claims 4 through 9, the                       
          examiner’s reasons set forth on pages 3 and 5 of the answer                 
          for rejecting these claims under the second paragraph of § 112              
          are unclear.  In part, the examiner seems to be concerned with              
          the fact that these claims are not limited to the order in                  
          which certain method steps are performed.  Such an omission                 
          does not necessarily render the claims indefinite.  Instead,                
          such an omission here merely deals with the breadth of the                  
          claims.  Breadth, however, is not to be confused with                       
          indefiniteness.  In re Miller, 441 F.2d 689, 691, 169 USPQ                  
          597, 600 (CCPA 1971).  We nevertheless consider claims 4                    
          through 9 to be indefinite for reasons that follow.                         
               It is unclear whether appellants intended the processing               
          step of claim 4 to merely recite further details of the                     

                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007