Appeal No. 1998-0061
Application No. 08/364,101
§ 103 as being unpatentable over Fraden in view of Nedivi and
Salem. Claims 6 and 14 additionally stand rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which appellant regards as his invention.
Reference is made to the examiner’s answer, to the examiner’s
first office action (Paper No. 4) and to the examiner’s final
office action (Paper No. 6) for details of these rejections.3
We cannot sustain the rejection of claims 6 and 14 under
the second paragraph of § 112. With respect to claim 6, the
examiner’s position as set forth on page 2 of the final office
action (Paper No. 6) is misplaced. It is the function of the
specification, not of the claims, to set forth how to practice
the invention. See In re Johnson, 558 F.2d 1008, 1017, 194
USPQ 187, 195 (CCPA 1977). With regard to claim 14, the
failure to refer to the peaks as “said peaks” does not obscure
the metes and bounds of the claimed invention. In the final
analysis, we are satisfied that claims 6 and 14 set out and
3 The rejection of the appealed claims under 35 U.S.C.
§ 112, first paragraph, was withdrawn by the examiner in
the supplemental answer (Paper No. 23) mailed September
17, 1997.
4
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