Appeal No. 98-2031
Application 08/794,154
Claims 61 through 63 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Nishiyama in view of Chen.
Claim 37 additionally stands rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which appellants
regard as their invention. In the examiner's view (answer, page 6),
Claim 37 contains the trademark/trade name "Kitecko Ultrasound Standoff
Pad". Where a trademark or trade name is used in a claim as a limitation to identify or
describe a particular material or product, the claim does not comply with the
requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218
USPQ 1020 (Bd. App. 1982). Thus claim 37 stands as not complying with 35 U.S.C.
112, second paragraph. Note that the claim scope is uncertain since the trademark or
trade name cannot be used properly to identify any particular material or product. A
trademark or trade name is used to identify a source of goods, and not the goods
themselves. Thus, a trademark or trade name does not identify or describe the goods
associated with the trademark or trade name.
Rather than reiterate the examiner's full statement of the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants regarding those rejections, we make
reference to the examiner's answer (Paper No. 20, mailed December 30, 1997) for the examiner's
complete reasoning in support of the rejections, and to appellants’ brief (Paper No. 17, filed August 29,
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