Appeal No. 2000-1794
Application 08/901,171
2000, Paper No. 16). The appellant (see pages 2 and 3 in the
reply brief) suggests that this Board has the authority to
remand the application to the examiner with instructions to
enter the amendment, and seemingly urges us to do so. It is
well settled, however, that the refusal of an examiner to enter
an amendment
after final rejection is a matter of discretion reviewable by
petition to the Commissioner rather than by appeal to this
Board. In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568
(CCPA 1967). Accordingly, we shall not review or further
discuss this matter.
II. The 35 U.S.C. § 112, second paragraph, rejection of claims
1 through 11 and 13
The examiner considers claims 1 through 11 and 13 to be
indefinite because
[i]n claims 1-11 and 13 the use of the recitation
“adapted to be” renders the claim indefinite.
Furthermore, it has been held that the recitation
that an element is “adapted to” perform a function is
not a positive limitation but only requires the
ability to so perform. It does not constitute a
limitation in any patentable sense. In re
[Hutchison], 69 USPQ 138. In claim 1, lines 6 and 7,
the recitation “a wrapper hidden portion . . . within
the inner surface of said wrapping material . . .” is
not clear [final rejection, page 2].
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007