Appeal No. 1997-1351
Application 08/127,924
In addition, a claim which fails to interrelate
essential elements of the invention as defined by
applicant(s) in the specification may be rejected under
35 U.S.C. 112, second paragraph, for failure to point
out and distinctly claim the invention. See
In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976);
In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968).
More recently, omission of an element disclosed to be
essential has been treated under the 35 U.S.C. § 112, first
paragraph, written description requirement. See Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
45 USPQ2d 1498 (Fed. Cir. 1998); Reiffin v. Microsoft Corp.,
48 USPQ2d 1274 (N.D. Cal. 1998) (omitted element test).
We limit our analysis to the stated ground of rejection
under 35 U.S.C. § 112, second paragraph. An
"incompleteness" rejection should be extremely rare for
reasons demonstrated by the Examiner's rejection. The
rejection basically finds all the disclosed structure to be
essential and would require all structure (controllers,
blockable coupling element, control lines, etc.) to be
included in an independent claim. This rejection could be
applied in almost every case since it could be said that
every part of a disclosed combination is somehow essential
to the overall purpose of the invention. This would
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