Appeal No. 96-3586
Application No. 08/262,848
support of their respective positions may be found on pages 3-
9 of the brief and pages 6-10 of the answer.
OPINION
Considering first the rejection of claims 14 and 15 under
35 U.S.C. § 112, second paragraph, the examiner is of the
opinion that the recitation of a part "such as" an automobile
part in independent claim 14 renders the claims indefinite.
As to claim 15, the examiner is further of the opinion that
the recitation of the release of the encapsulated surface
etchant being accomplished over a "predetermined period of
time" is also indefinite.
With respect to the "such as" limitation in independent
claim 14, the appellant argues:
That statement to which the examiner objects is
merely exemplary as [to] the type of part which may
be permanently marked by the method. It certainly
does not render the claim unclear. If anything, it
renders it more clear. It is perfectly clear that
the method permanently marks indicia on a part such
as, for example, an automobile part. How could the
statement be more clear? [Brief, page 3.]
The appellant's arguments are not persuasive. The
recitation "such as an automobile part" is vague and uncertain
since it is not clear from the specification what the
3
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