Appeal No. 1998-1266 Page 9
Application No. 08/354,459
Under the provisions of 37 CFR 1.196(b), the following new
grounds of rejection are entered against claims 3 and 5 through
8:
1. Claims 3 and 5 through 8 are rejected under the first
paragraph of 35 U.S.C. § 112 as being based on a specification
which, as filed, does not satisfy the description requirement
in that paragraph.
2. Claims 3 and 5 through 8 are rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite and hence
failing to particularly point out and distinctly claim the
subject matter which appellants regard as their invention.
With regard to the new ground of rejection of claims 3 and
5 through 8 under § 112 first paragraph our first difficulty
with the claim language centers on the recitation in claim 5
that the cutting tool has “a diameter which is one of equal to
and smaller than a diameter of the formed hole.” We interpret
this limitation to mean that the diameter of the cutting tool
is either equal to or smaller than a diameter of the formed
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