Appeal No. 1996-2966
Application No. 08/257,232
ground of rejection against claims 1-20 on this basis using
our authority under 37 CFR § 1.196(b). We reverse the
rejections of claims 1-20 under 35 U.S.C. § 103 on a strictly
technical basis as explained below. Accordingly, we reverse
the examiner’s rejections of the claims under 35 U.S.C. § 103,
but we add a new rejection of the claims under the second
paragraph of 35 U.S.C. § 112.
Before we consider the examiner’s rejections of the
claims under 35 U.S.C. § 103, we note a recitation in
independent claims 1 and 11 which renders each of these claims
indefinite. Specifically, each of the claims in paragraph a.
subparagraph iv. recites writing new data to the addressing
circuitry “before said resetting step.” There is no
“resetting step” recited in either claim 1 or claim 11. Since
the metes and bounds of a claimed process must be determined
by considering the sequence of steps recited in the claimed
process, a step which must be performed before a step which
has not been recited makes no sense at all. We are not going
to try to guess whether “said resetting step” should be
something else such as “said repeating step” or whether a
resetting step has been unintentionally omitted from the
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