Appeal No. 1999-0053
Application 08/714,954
F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Also, the
limitations in engine claims 10 and 12 drawn to the chart and
diagram relating to the prior art engine amount to product-by-
process limitations used to define the appellant’s engine.
Such product-by-process limitations do not inherently conflict
with the second paragraph of § 112. See In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). The corresponding
limitations in method claims 11 and 13 merely present a
starting point for the processes recited therein.
In light of the foregoing, and notwithstanding the
somewhat unconventional claim format employed by the
appellant, the examiner has not made out a prima facie case
that claims 10
through 13 fail to set out and circumscribe a particular area
with a reasonable degree of precision and particularity.
Therefore, we shall not sustain the standing 35 U.S.C. § 112,
second paragraph, rejection of these claims.
Finally, the examiner’s comments in the first Office
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007