Appeal No. 1997-0186
Application No. 08/314,568
generic alkoxy silane that does not limit or define, in all
instances, the scope thereof. This construction of the claims
is consistent with the listed dimethoxydiphenyl silane,
original claims 1 and 5, and appellants’ argument (brief,
carryover paragraph, bridging pages 5 and 6) discussing the
breadth and meaning of the term “alkoxy silane” as used in
claim 1 (brief, page 5).
The patent statutes and rules do not require the
specification must be drafted as a model of clarity in a
manner and ordered arrangement as the majority would prefer.
Furthermore, claim breadth does not equate with indefiniteness
as the majority would seem to suggest.
Finally, the case for introducing a new ground of
rejection of claim 5 under 35 U.S.C. § 112, fourth paragraph
pursuant to the provisions of 37 CFR § 1.196(b) as a
necessary, appropriate and presumably sustainable rejection
that must be introduced to resolve a perceived duplicate claim
issue has simply not been made by the majority. An
appropriate procedure for the examiner to address duplicate
claims is set forth in § 706.03(k) of the Manual of Patent
Examining Procedure (MPEP)(7th ed., Rev. 1, Feb. 2000).
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