Ex parte IWASAWA et al. - Page 8




          Appeal No. 1997-1212                                                        
          Application 08/017,839                                                      

          described in the specification and equivalents thereof,"                    
          35 U.S.C.  112, sixth paragraph.  For example, the Examiner                
          states (FR3):  "The steps of deciding are desired results.                  
          They start out by 'deciding...' but do not recite what must                 
          be done to perform these steps."  Appellants argue that the                 
          language would be understood by one of ordinary skill in the                
          art when read in light of the disclosure (Br15).  The                       
          Examiner does not address how the claims are indefinite when                
          properly interpreted under 35 U.S.C.  112, sixth paragraph,                
          to include the acts described in the specification.                         
               Some of the other problems appear due to the Examiner's                
          failure to read the claims closely.  For example, the                       
          Examiner states that "[i]t is unclear when the inserting                    
          step [of claim 6] should be performed in terms of the steps                 
          of claim 5" (FR4).  However, claim 6 says "the step of                      
          inserting into said source program prior to said execution,"                
          and it is clear that this means before the step of                          
          "sequentially executing said source program" in claim 5.                    
               The Examiner notes a discrepancy in claim 6 (FR4):                     
          "regarding claim 6, the claim recites 'when it is not                       
          possible to decide' where the previous claim [5] already                    

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