Appeal No. 1997-3024
Application 08/325,476
Concerning the examiner’s position that the support
cannot be considered part of the claimed apparatus because it
is the material being operated upon, we know of no per se rule
prohibiting an applicant from positively reciting in an
apparatus claim an article worked upon by the apparatus in
order to establish with clarity and precision a critical
relationship therebetween. As to the Hughes and Rishoi cases2 3
cited by the
examiner in support of the rejection, we note that in each of
these cases the claims were rejected as being unpatentable
over prior art. It would be inappropriate, in our view, to
extract and distill from the language the court used in
deciding these cases a general rule of claim indefiniteness
when that issue was not squarely before the court.
In light of the foregoing, we will not sustain the
standing rejection of claims 1-5 and 17-20 under 35 U.S.C. §
112, second paragraph.
In re Hughes, 49 F.2d 478, 9 USPQ 223 (CCPA, 1931)2
3In re Rishoi, 197 F.2d 342, 94 USPQ 71 (CCPA 1952)
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007