Ex parte BERENDS et al. - Page 9




                     Appeal No. 1999-0195                                                                                                                                              
                     Application 08/507,424                                                                                                                                            


                     mounted” to a carriage, as called for in claim 16, cannot at                                                                                                      
                     the same time be accurately described as being mounted “for                                                                                                       
                     substantially linear movement” relative to said carriage, as                                                                                                      
                     called for in claim 14.   Accordingly, we consider that claim1                                                                                                               
                     16 is inaccurate and indefinite because it is inconsistent                                                                                                        
                     with and contrary to the requirements of claim 14 from which                                                                                                      
                     it depends.                                                                                                                                                       
                                                                   Remand to the Examiner                                                                                              
                                This case is remanded to the examiner to determine                                                                                                     
                     whether dependent claims 2-8, which depend from newly rejected                                                                                                    
                     claim 1, should be rejected under 35 U.S.C.  102(b) as being                                                                                                     
                     anticipated by Cone or under 35 U.S.C.  103 as being                                                                                                             
                     unpatentable over Cone, either alone or further in view of                                                                                                        
                     other prior art.                                                                                                                                                  
                                                                                   Summary                                                                                             
                                The examiner’s rejection of claims 1-8 and 14-16 as being                                                                                              
                     unpatentable over Blunden in view of Cone is reversed.                                                                                                            
                                Pursuant to 37 CFR  1.196(b), new rejections of claims 1                                                                                              


                                1We appreciate that our view in this regard may differ                                                                                                 
                     from that of appellants.  See, for example, page 8, last                                                                                                          
                     paragraph, of the main brief.                                                                                                                                     
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