Ex parte MATSUMOTO et al. - Page 3




                 Appeal No. 1999-0899                                                                                                                   
                 Application No. 08/654,752                                                                                                             



                 (a) "the other of said molds" (lines 11 and 12)  lacks                              2                                                  
                 positive antecedent basis, and (b) claim 19 to be indefinite                                                                           
                 because "by only shot of melt resin" (lines 1 and 2) is                                                                                
                 unclear.                                                                                                                               


                 (a) Claim 13                                                                                                                           
                          The test for compliance with 35 U.S.C. § 112, second                                                                          
                 paragraph, is "whether a claim reasonably apprises those of                                                                            
                 skill in the art of its scope."  In re Warmerdam, 33 F.3d                                                                              
                 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).  Claim 13                                                                           
                 recites, in lines 8 to 12, "a pair of male and female molds,"                                                                          
                 "one of said molds," and "the other of said molds."  In this                                                                           
                 context, it is not evident to us how one of ordinary skill                                                                             
                 could reasonably have any doubt as to what previously-recited                                                                          
                 structure "the other of said molds" was intended to refer.                                                                             
                          The rejection of claim 13 will not be sustained.                                                                              
                 (b) Claim 19                                                                                                                           
                          On page 8 of the brief, appellants do not disagree with                                                                       

                          2Claim lines referred to herein are numbered from the                                                                         
                 lines of the claim copies in the appendix of appellants'                                                                               
                 brief.                                                                                                                                 
                                                                           3                                                                            





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