Ex parte DEMASTERS - Page 3




                 Appeal No. 98-0057                                                                                                                     
                 Application No. 08/320,016                                                                                                             


                 distinctly claim the subject matter which appellant regards as                                                                         
                 his invention.2                                                                                                                        
                          The basis for the rejection of claims 1 through 8 under                                                                       
                 the second paragraph of § 112 involves two limitations in                                                                              
                 claim 1. The examiner’s first difficulty with the claim                                                                                
                 language centers on the recitation that the outer plastic                                                                              
                 layer has “an ultraviolet light-protective color.” The                                                                                 
                 examiner’s second difficulty with the claim language centers                                                                           
                 on the word “accurately” in the recitation that the inner                                                                              
                 plastic layer “is [sic, has] a light-reflecting color such                                                                             
                 that the interior of said helical pipe can be accurately                                                                               
                 inspected . . .”                                                                                                                       
                          In arguing that the claim language is definite, appellant                                                                     
                 relies on the following definitions presented on page 8 of the                                                                         
                 specification for the expressions “ultraviolet light-                                                                                  
                 protective color” and “light-reflecting color”:                                                                                        
                          By ultraviolet light-protective color it is meant                                                                             
                          that the plastic layer has a color and composition                                                                            
                          sufficient to prevent or retard the deterioration of                                                                          

                          2The examiner has offered no reason why claim 15 was                                                                          
                 omitted from this rejection, despite the fact that this                                                                                
                 dependent claim, like claims 2 through 8, is in the chain of                                                                           
                 dependency from claim 1.                                                                                                               
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