Appeal No. 1997-2977
Application No. 08/431,688
limitation of the subject matter claimed. A claim
in dependent form shall be construed to incorporate
by reference all the limitations of the claim to
which it refers. [Underlining added.]
Thus, the fourth paragraph of section 112 requires a dependent
claim to (1) refer to a previous claim and (2) specify a
further limitation of the subject matter claimed.
The examiner states that claim 7 does not comply with the
statute because it does not recite a further limitation of the
subject matter claimed. Specifically, the examiner takes the
following position:
Claim 7 is claiming a characteristic of the
topcoat. This does not serve to further limit the
composite in any way. [Examiner’s answer, p. 4.]
We disagree. Claim 7 recites that the fluoropolymer
topcoat is “resistant to shrinkage and flaking.” This
limitation is not recited in the previous claim (i.e., claim
1). It follows then that claim 7 complies with the statute
because it specifies a further limitation of the subject
matter claimed. Although the examiner states that “[c]laim 7
merely recites further characteristics which would have been
present in known fluoropolymer materials, namely resistance to
shrinkage and flaking” (examiner’s answer, page 5), nothing in
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