Appeal No. 1997-1354
Application No. 08/432,610
OPINION
After a careful review of the evidence before us, we will
not sustain the rejection of claims 1 through 12 under 35
U.S.C. § 112, second paragraph (as expressed by the Examiner),
nor under 35 U.S.C. § 103.
The Examiner maintains that the claims are indefinite for
attempting to claim an apparatus in combination with a method
(answer-page 3), that hybrid claims are not permitted, and a
claim must include only one of the four statutory classes of
invention (final rejection-page 2). We do not agree with the
Examiner. A claim is not limited to only one statutory class
of invention as long as one of ordinary skill in the art can
understand that which Appellant is claiming. Also, Appellant
has amended all claims to be directed to a method, thus we
find no combination of statutory classes in the claimed
invention. We note however, although claim 1 is a method
claim, it appears to include a method within a method, i.e., a
method of associating user profile records within a method for
ordering goods or services. This too, is not fatal to the
patentability of a claim if one can understand the scope of
claimed invention. Thus, we will not sustain the Examiner’s
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