Appeal No. 1997-1431
Application No. 08/323,976
before us, that claims 5-17 particularly point out the
invention in a manner which complies with 35 U.S.C. § 112.
Accordingly, we reverse.
The pertinent parts of the examiner’s rejection read
as follows:
Claims 5-17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicant regards as the invention.
Claims 5-17 are inoperative and therefore lack utility
for the recited purpose of the disclosed and claimed
invention, since
1) a printing operation never takes place in
claims 5, 6 & 14 the cost of the printing
operation can not be billed to an account.
2) the actual cost of the printing job that is
associated with a particular account in claims 6
& 11 is never determined, it would be improper
to bill the entire usage of the machine to a
particular account.
3) the claims fail to accomplish what is recited
in the preamble.
...
The subject matter of claims 5-10, in regard to the
recited details, lacks antecedent basis within the
specification as required by 37 CFR § 1.75(d 1)[answer, page
3].
4
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