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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