Appeal No. 1998-1778 Page 6
Application No. 08/521,358
The examiner stated (answer, pp. 5-6) that
[c]laims 12 and 13 are non-sequitur. The claims are
directed to the Fig. 3 embodiment which does not include
the "electrically operated device" defined in claim 1.
Since the hybrid embodiment required to describe the
claimed subject matter has been determined to be not
supportable by the original disclosure (see petition
decision mailed August 21, 1997), the claims remain
indefinite.
The appellants argue (brief, p. 20) that claims 12 and 13
comply with the requirements of 35 U.S.C. § 112, second
paragraph. Specifically, the appellants point out how claims
1, 12 and 13 are readable on Figure 3. In addition, the 2
appellants argue (reply brief, pp. 1-2) that claims 1, 12 and
13 are readable on newly presented Figure 3A.3,4
In our view, claims 12 and 13 define the metes and bounds
of the claimed invention with a reasonable degree of precision
and particularity. Accordingly, claims 12 and 13 are
2The examiner did not respond to the appellants' argument
in the answer.
3Newly presented Figure 3A is based upon the disclosure
set forth on page 8, lines 27-32, of the specification.
4The examiner did not respond to this argument of the
appellants.
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