Appeal No. 1998-0515
Application 08/425196
However, we do agree with the examiner that claim 1 is indefinite in its recitation of (1) "an
external slot formed when said mounting strips are attached to any suitable flat surface" (lines 12 and
13), and (2) "whereby, when said mounting strips are mounted on said flat surface, the distance
between said seams is substantially equal to the distance between two parallel edges of the print to be
mounted" (lines 27 to 29). By using the term "when" in these expressions, rather than positively reciting
that the strips are mounted on the flat surface at the specified distance, one of ordinary skill would not
be reasonably apprised of the scope of claim 1. See In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). In particular, one of ordinary skill could not reasonably
determine whether claim 1 was of such scope as to cover mounting strips attached to a flat surface, so
that there would be an external slot (claim 1, part (d)), and so that the distance between the seams
would be as recited in claim 1, lines 27 to 29, or whether claim 1 was of some broader scope, e.g., as
to cover the mounting strips unattached. For this reason, we conclude that claim 1 does not comply
with 35 U.S.C. § 112, second paragraph, and will sustain the rejection of claim 1, and therefore of
dependent claims 2 and 10.
Claim 11 likewise does not comply with § 112, second paragraph. While this claim, unlike
claim 1, does claim a base with a flat surface as element (a), its scope is still indefinite because it would
not be reasonably clear to one of ordinary skill what the scope of the claim was, for the reasons
discussed above with respect to claim 1. The rejection of claims 11 to 20 will accordingly be
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