Ex parte CORRY - Page 4




                 Appeal No. 1996-3597                                                                                     Page 4                        
                 Application No. 08/050,825                                                                                                             


                 founded.  Accordingly, these rejections will be reversed for                                                                           
                 substantially the reasons set forth by appellant in the brief.                                                                         
                          The relevant inquiry under 35 U.S.C.  112, second                                                                            
                 paragraph, is whether the claim language, as it would have                                                                             
                 been interpreted by one of ordinary skill in the art in light                                                                          
                 of appellant’s specification and the prior art, sets out and                                                                           
                 circumscribes a particular area with a reasonable degree of                                                                            
                 precision and particularity.  See In re Moore, 439 F.2d 1232,                                                                          
                 1235, 169 USPQ 236, 238 (CCPA 1971).                                                                                                   
                          In rejecting the appealed claims under 35 U.S.C.  112,                                                                       
                 second paragraph, the examiner (answer, page 3) urges that                                                                             
                 "... the term predetermined is unacceptable" and makes                                                                                 
                 reference to the mold, article, polymer composition and the                                                                            
                 "flexible and liquid impervious layer" (claim 1) as not being                                                                          
                 identified.   At page 5 of the answer, the examiner further2                                                                                                                  
                 attempts to explain that "... the term 'predetermined' is                                                                              
                 unacceptable because it does not further define the claim" and                                                                         


                          2We note that the examiner's additional references to                                                                         
                 claim 15 and the "resulting article" language of claims 2-5                                                                            
                 and 10-12 (answer, page 3) are not germane since claim 15 has                                                                          
                 been canceled and claims 2-5 and 10-12 have been amended to                                                                            
                 remove any reference to a "resulting article."                                                                                         







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