Appeal No. 1997-0186
Application No. 08/314,568
from 0 to 3 and where R and R' are alkyl. See In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969)
(claims cannot be read in a vacuum but instead must be read in
the light of the specification).
However, Claim 5 recites:
A catalyst component as claimed in Claim 1 wherein
the alkoxy silane is of the formula R Si(OR') where
n 4-n
n ranges from 0 to 3 and R and R' are alkyl.
A comparison of claim 5 and claim 1, when read in light
of the specification, reveals that both claims 1 and 5 are
limited to the same alkoxy silanes. Therefore, claim 5 fails
to further limit the subject matter of claim 1 as required by
35 U.S.C.
§ 112, fourth paragraph.3
3In our judgment, it is entirely appropriate to reject a
dependent claim under 35 U.S.C. § 112, fourth paragraph,
where, as here, that claim does not "specify a further
limitation of the subject matter claimed." See In re Haas,
486 F.2d 1053, 1056, 179 USPQ 623, 625 (CCPA 1973) (action
taken by examiner amounted to a rejection of claims where
patentability of claims had been denied); compare In re
Priest, 582 F.2d 33, 37, 199 USPQ 11, 14 (CCPA 1978) (decision
adversely affecting claim held to be appealable). To the
extent that the rejection of claim 5 under 35 U.S.C. § 112,
fourth paragraph, is inconsistent with MPEP §§ 608.01(n) and
706.03(k) (7th ed., Rev. 1, Feb. 2000), we decline to follow
those sections of the Manual. See Ex parte Schwarze, 151 USPQ
426, 428 (Bd. Pat. App. 1966) (disagreement with MPEP noted in
13
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