Appeal No. 97-2535
Application 08/129,108
that the recitation of the word "wherein" instead of the word "comprises" in the preambular phrase "the
improvement wherein . . ." renders the claim language indefinite.
Admittedly, the word "comprises" is used in the customary Jepson format. Although this
language is suggested in 37 CFR § 1.75(e), it does not necessarily follow that the use of the word
"wherein" in place of the word "comprises" renders the claims indefinite. Despite the use of the word
"wherein" in the preambular phrase "the improvement wherein . . .", one skilled in the art would
nevertheless understand what is claimed. As a result, the claims are considered to be definite as
required by the second paragraph of § 112. See Seattle Box Co. v. Industrial Crating & Packing Inc.,
731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). Accordingly, we must reverse the
examiner's rejection of claims 9, 10 and 14 through 24 under the second paragraph of § 112.
With regard to the § 103 rejection of independent claim 9, the examiner concludes that "[i]t
would have made it obvious to replace the welded vertical rod connection [of Schutz] with a threaded
connection by adding threads to the vertical rod of Schutz and extending this vertical rod through the
plate of Schutz and fastening the vertical rod to the plate with a nut as taught by both Marques and
Rudko in order to make the connection between the vertical rod and pallet
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