Appeal No. 1999-2832 Page 9
Application No. 08/816,559
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Claim 9 (the only independent claim pending in this
application) includes the limitation "a releasable device
selected from the group comprising a brake and a clutch
configured to prevent rotation of the component of the
freewheel [emphasis ours]."
Ex parte Markush, 1925 C.D. 126 (Comm'r Pat. 1925)
sanctions claiming a group as consisting of certain specified
members. It is well-settled that it is improper to use the
term "comprising" instead of "consisting of." See Ex parte
Dotter, 12 USPQ 382 (Bd. App. 1931) and Manual of Patent
Examining Procedure (MPEP) § 2173.05(h). Thus, it is our view
that claim 9, and all claims dependent thereon, is indefinite
for utilizing the term "comprising" in the limitation "a
releasable device selected from the group comprising a brake
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