Appeal No. 2000-0791 Page 3
Application No. 08/858,286
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art reference, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
The appellant’s inventive baggage tag comprises, inter alia, a liner that is
described in the specification as being of tear-resistant material “such as VALERON®,”
which is the trademark of Van Leer Corporation “for a tear resistant material, constructed
in such a manner that its fibers are oriented perpendicular to one another to resist tearing”
(page 7). Dependent claims 4, 8, 11 and 13 contain the limitation that the liner first recited
in the claims from which they depend “is comprised of a tear-resistant material sold under
the trademark VALERON®.” It is the examiner’s position that this renders the claim scope
uncertain since a trademark does not identify the goods upon which it is used, but the
source of the goods. The appellant argues in response that the use of a trademark in the
fashion here used is proper, citing Section 608.01(v) of the Manual of Patent Examining
Procedure (MPEP). We find ourselves in agreement with the examiner on this issue, and
we therefore will sustain the rejection.
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