Appeal No. 96-3586
Application No. 08/262,848
appellant intended to cover by the recitation "such as." Note
Ex parte Remark, 15 USPQ2d 1498, 1500 (Bd. Pat. App. & Int.
1990); Ex parte Kristensen, 10 USPQ2d 1701, 1703 (Bd. Pat.
App. & Int. 1989); Ex parte Steigerwald, 131 USPQ 74, 75 (Bd.
App. 1961); Ex parte Hasche, 86 USPQ 481, 482 (Bd. App. 1949);
and Ex parte Hall, 83 USPQ 38, 39 (Bd. App. 1948). The
appellant's specification provides no restricting examples or
guidelines for use in determining when a particular part is,
or is not, to be considered a part "such as" an automobile
part and, accordingly, one of ordinary skill in the art is
precluded from determining the metes and bounds of the claimed
subject matter. Indeed, this uncertainty is exemplified by
the fact that the appellant with respect to the § 103
rejection (1) appears to contend that there is a "great deal
of difference" between the marking of a part "such as" an
automobile part and the marking of the "part" (i.e., the metal
coated sheet) of Altman (see the paragraph bridging pages 5
and 6 of the brief) and (2) that in Lawson the wire, rather
than the outer layer or covering of the sleeve label 22, must
be considered to be the part "such as" an automobile part
(brief, page 6) whereas the examiner urges that both the
4
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