Appeal No. 1996-1243
Application No. 08/226,224
support be found for proper antecedent basis. The only
question is whether the artisan would understand what is
covered by the claim. As appellants point out in the reply
brief, “the first said path” can only refer to “a path of
transactions” in line 7 of claim 27 [appendix version], and
the “said other path” is clearly referring to the “another
path” in line 13. There is no other reasonable way for these
phrases to be interpreted. Therefore, since the artisan would
understand what is covered by the objected to phrases, these
phrases are not indefinite under 35 U.S.C. § 112.
We also do not agree with the examiner’s other finding
that the claims are incomplete. The examiner has essentially
decided that he will determine what appellants’ invention is
and the amount of detailed limitations which will be necessary
to support the disclosed invention. The examiner’s objection
goes to the breadth of the claimed invention rather than to
the indefiniteness of the claimed invention. It is up to
appellants to decide what portion of their disclosed invention
they wish to include in the claims. The claimed invention can
typically be as broad as the prior art permits. Therefore, it
is inappropriate for the examiner to seek to narrow the
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