Appeal No. 1999-2365
Application 08/569,999
(B) Claim 29 is rejected for failure to comply with the second
and fourth paragraphs of 35 U.S.C. § 112. The recitation of
the Markush group as "consisting of, but not limited to"
certain configurations renders the group indefinite as to its
scope, violating § 112, second paragraph. See Ex parte
Morrell, 100 USPQ 317, 319 (Bd. App. 1953). Also, by virtue
of the expression "but not limited to," the claim covers all
possible configurations, and therefore does not constitute a
"further limitation" on parent claim 28, as required by § 112,
fourth paragraph.
Remand to the Examiner
Pursuant to 37 CFR § 1.196(e), this case is remanded
to the examiner to consider:
(I) Whether any of claims 3, 5 to 12, 14 to 27 and 30 should
be rejected under 35 U.S.C. § 103 as unpatentable over Thier
in view of other prior art.
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