Appeal No. 1998-0515
Application 08/425196
are narrative in form and replete with indefinite and functional or operational language.
The structure which goes to make up the device must be clearly and positively
specified. The structure must be organized and correlated in such a manner as to
present a complete operative device. The claim(s) must be in one sentence form only.
Note the format of the claims in the patent(s) cited.
Examples of the indefinite errors are as follows: In claim 1, line 3, there is no antecedent
basis for "the length". In claim 1, line 4, it is not understood how a single fold can form
three members, i.e. a lip, a long leg and a short leg. In claim 1, section (d), line 1, it is
not clear whether the applicant is positively claiming the external slot. (Pages 3 and 4).
On page 5 of the answer, the examiner gives further examples of language in claim 1 which he considers
to be indefinite:4
in claim 1, line [12], "an external slot formed when said mounting strips are attached".
It is unclear from the above whether the appellant is positively claiming the external slot.
In claim 1, line [15], the phrase "whereby a plurality of said mounting strips may be
fastened parallel to each other" is indefinite since it is not clear whether the appellant is
positively claiming the plurality of mounting strips fastened parallel to each other.
Examples of the same problem in claim 1 as mentioned above appear as follows: on line
[27], the phrase "whereby, when said mounting strips are mounted"; line [40],
"whereby, when said second parallel edge"; line [47], "whereby, when said second
parallel edge".
Initially, we do not agree that the claims are narrative in form or not in one sentence.
Independent claims 1 and 11, for example, are each in one sentence, and, rather than being in narrative
form, set out a combination of elements (a) to (d) (claim 1), or (a) to (e) (claim 11), followed by a
number of "whereby" clauses.
4In quoting from the examiner's statements, we have changed the line numbers where
necessary to correspond to the lines of the claims as reproduced in the appendix of appellant's brief.
The changed numbers are given in brackets.
3
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