Appeal No. 96-3563
Application No. 08/249,079
support of the rejections, and to the appellants’ brief (Paper No. 26, filed Oct. 3, 1995) and
reply brief (Paper No. 29, filed Mar. 6, 1996) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
CLAIM 7
The examiner rejected claim 7 as failing to particularly point out and distinctly claim
the invention because the claim limitations “the previously selected display sub-element”
and “said previously selected display sub-element” lack proper antecedent basis in the
claim. Appellants argue that the terms are defined in the specification at page 7, lines 31-
35. (See brief at page 22.) This argument is not persuasive. The claim must particularly
point out and distinctly claim the invention, not the specification. The claim introduces
“display elements” previously in the claim, but not “sub-elements.” Nor has the claim
identified what “previously selected” references. We will sustain the rejection of claim 7 as
failing to particularly point out and distinctly claim the invention under 35 U.S.C. § 112,
second paragraph.
CLAIMS 1-9
4
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