Appeal No. 95-2502
Application No. 07/763,625
claim 4. In addition, it is unclear whether appellants
intended the remaining steps in claim 7 (i.e., the steps apart
from the evaluating step) and the steps recited in claim 9 to
be part of or independent from the processing step in claims
1, 4 or 5.
For the foregoing reasons, claims 4 through 9 do not
define the metes and bounds of the invention with a reasonable
degree of precision as required in In re Venezia, 530 F.2d at
958, 189 USPQ at 151. Accordingly, we will sustain the
rejection of claims 4 through 9 under the second paragraph of
§ 112.
In summary, the examiner’s decision to reject claims 1, 4
through 11 and 14 through 22 under § 102(b) and to reject
claim 20 under § 112, second paragraph, is reversed, and the
examiner’s decision to reject claims 4 through 9 under § 112,
second paragraph, is affirmed. Since our reasons supporting
the rejection of claims 4 through 9 under § 112, second
paragraph, appear to differ from the examiner’s reasons, we
herewith designate our affirmance of the rejection of claims 4
through 9 under the second paragraph of § 112 as a new ground
of rejection under the provisions of 37 CFR § 1.196(b).
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