Ex parte TRUMMER et al. - Page 7




          Appeal No. 1997-1351                                                         
          Application 08/127,924                                                       

               Appellants argue that "[a]lthough claim 19 does not                     
          specifically recite a controller which connects the control                  
          processor system and the remainder processor system with the                 
          bus system, the Applicants respectfully submit that this                     
          claim is nonetheless definite as required under 35 U.S.C.                    
          § 112, second paragraph" (Br5).  No explanation is offered.                  
          Contrary to the Examiner's statement that Appellants admit                   
          that the claim is incomplete (EA6), Appellants only admit                    
          that the controller which connects the control processor                     
          system and the remainder processor system is not recited.                    
               The Examiner provides case citations for the                            
          "incompleteness" rejection for the first time in the                         
          Examiner's Answer.  First, the Examiner states (EA6):                        
          "[T]he claims must recite the unique combination of                          
          structural features and the manner in which these are                        
          related to each other which enables them to cooperate to                     
          produce the unitary result characteristic of the invention.                  
          see [sic] In re Thompson, 33 [sic] F2d 604, 607,                             
          143 USPQ 21, 23 (CCPA 1964)."  The only statement on the                     
          page referred to by the Examiner which is somewhat relevant                  
          is the following:  "A particular feature upon which an                       

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