Appeal No. 1997-3024
Application 08/325,476
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Shibata in view of appellants’ admitted
prior art (AAPA).
The 35 U.S.C. § 112, second paragraph, rejection
Considering first the rejection of apparatus claims 1-5
and 17-20 under the second paragraph of 35 U.S.C. § 112, it is
the examiner’s view (answer, page 4) that the support, i.e.,
the web 30, cannot be considered part of the claimed apparatus
because it is the material being operated upon. The examiner
maintains that
[s]ince the support is not part of the claimed
apparatus, there is no required positioning for the
support and, therefore, the distance [T] between the
support [30] and the plate [7] cannot be calculated
with definiteness. As a result, the area [T x W]
which is calculated based on the measured distance
[T] also cannot be calculated with definiteness, and
the overall claims lack definiteness. [Answer, page
4].
Because we do not agree with the examiner’s foundation
position that the support is not part of the claimed subject
matter, we will not sustain this rejection. Lines 1-3 of
4
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