Appeal No. 1997-3240
Application 08/176,940
rejected under 35 U.S.C. § 112 and that claims 1 through 4, 8
and 9 are properly rejected under 35 U.S.C. § 103.
Accordingly, we reverse.
Turning to the rejection of claims 13 through 17 under 35
U.S.C. § 112, second paragraph, Appellant, on page 14 of the
brief, argues that apparatus claims 13 through 17 depend from
multi-step process claims 8 through 12 and have proper linking
claim format. Appellant further adds that the base claims
satisfy the requirements of 35 U.S.C. § 112, second paragraph,
and therefore, claims 13 through 17 must satisfy those same
requirements.
In response to Appellant’s arguments, the Examiner, on
page 4 of the answer, points out that claims 13 through 17 are
unduly broad since all possible apparatuses that perform those
processes have to be considered. The Examiner further adds
that one [skilled] in the art cannot determine all possible
apparatuses that perform the process as in Appellant’s claims
13 through 17.
With regard to claim 13, we note that it depends from
claim 8 and properly recites an apparatus for the practice of
the process of claim 8. We agree with Appellant that to
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