Appeal No. 1996-2972 Page 5
Application No. 07/928,784
"...it is unclear whether the limitation(s) following the
phrase are part of the claimed invention or not, and the
resulting claim does not clearly set forth the metes and
bounds of the patent protection desired."
We recognize that the recited permissive phrase "may" as
utilized in claim 1 does not require the limitation that
follows must occur; i.e., that one of the molds is stationary
while the other of the two molds is moving. However, such
breadth does not equate with indefiniteness. See In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). From
our reading of appellants' specification, including the
claims, and the relevant prior art, it is clear to us that
appellants are correct in asserting, in essence, that one mold
need not be stationary while the other moves (brief, page 11).
Accordingly, we shall not sustain the examiner*s rejection of
the appealed claims under 35 U.S.C.
§ 112, second paragraph on the above-noted basis.
However, our ultimate disposition of the examiner's 35
U.S.C. § 112, second paragraph rejection of claim 3, as well
as the claims depending therefrom (i.e., claims 4, 5, 13-15,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007