Appeal No. 1999-1036
Application No. 08/644,523
reinforcement system for embedding in a slab floor. However,
from our perspective, this is not clearly carried through in
the body of the claim, where it is stated that the shear
reinforcement members are not merely positionable with respect
to a slab floor, as would seem to be the thrust of the “for
embedding” phraseology of the preamble, but are positively
related to a particular slab floor by being positioned with
respect to a plane “of” that slab floor, which suggests that
the floor is part of the claimed invention. This
interpretation is confirmed by the phrase that appears further
on in the claims, in which another element is defined as
extending parallel to the plane of “the” slab floor.
The section of the Manual of Patent Examining Procedures
(MPEP), and the cases cited by the appellant do not dissuade
us from the above conclusion. MPEP Section 2173.02 states
that the claims should be analyzed in light of the disclosure,
the prior art, and the interpretation that would be given by
one of ordinary skill in the art, and goes on to point out
that if the scope cannot be determined “with a reasonable
degree of certainty,” a rejection under the second paragraph
of Section 112 is appropriate. We, like the examiner, are of
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