Appeal No. 1998-0515
Application 08/425196
Rejections Pursuant to 37 C.F.R. § 1.196(b)
Pursuant to 37 C.F.R. § 1.196(b), we enter the following new rejections:
(1) Claims 3 and 13 are rejected for failing to comply with 35 U.S.C. § 112, second paragraph, in that
they recite that the thickness of the seam "may be sufficient to form a gap [etc.]." Such a recitation that
claimed structure "may be" a certain size leaves it unclear as to whether the scope of the claim is so
limited, or not. Cf. Ex parte Hasche, 86 USPQ 481, 482 (Bd. Apps. 1949) (expressions such as
"which may be" do not properly define the invention with particularity).
(2) Claims 6 and 16 are rejected under 35 U.S.C. § 112, second and fourth paragraphs. The fourth
paragraph of § 112 provides, inter alia, that "a claim in dependent form shall . . . specify a further
limitation of the subject matter claimed." The recitation in these claims that "said long leg of said
mounting strips is longer than said short leg" is not a further limitation of parent claims 1 and 11,
respectively, because a "long leg" is necessarily longer than a "short leg." Alternatively, if this is 5
intended to be a further limitation, claims 6 and 16 are indefinite under
§ 112, second paragraph, because it is not evident what that further limitation is.
Conclusion
The examiner's decision to reject claims 1 to 20 is affirmed. Claims 3, 6, 13 and 16 are
rejected pursuant to 37 C.F.R. § 1.196(b).
5The "whereby" clause in claims 6 and 16 does not constitute a further limitation. Texas
Instruments, supra.
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