Appeal No. 1997-1351
Application 08/127,924
applicant predicates patentability must be recited in the
claims; it is not sufficient merely to disclose it in the
specification." In re Thompson, 336 F.2d 604, 607,
143 USPQ 21, 23 (CCPA 1964). This goes to the issue of
defining over the prior art, not to indefiniteness for being
incomplete. Thus, Thompson does not support the Examiner's
rejection.
Second, the Examiner states (EA6-7): "A claim need
[sic] to recite each and every element needed for the
practical utilization of claimed subject matter[.] see
[sic] Bendix Corp. v. United States, 600 F 2d 1364, 1369,
204 USPQ 617, 621 (Ct. Cl. 1979)." The Examiner misstates
the case, which actually states that "it is not necessary
that a claim recite each and every element needed for the
practical utilization of the claimed subject matter"
(emphasis added), Bendix Corp. v. United States,
600 F.2d 1364, 1369, 204 USPQ 617, 621 (Ct. Cl. 1979).
Thus, Bendix does not support the Examiner's rejection.
Lastly, the Examiner states (EA7): "The omission of a
structural element essential to the proper operation of a
device renders the claim invalid. (True Temper Corp. v. CF
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