Appeal No. 2000-1794
Application 08/901,171
In further explanation of this position, the examiner
states that
the use of the language “adapted to be” renders the
claim indefinite because, for example, Appellant is
not positively claiming the visible gripping portion
being positioned externally of the wrapping material.
The recitation “a wrapper hidden . . . within the
inner surface of the wrapping material . . .” is not
clear to the Examiner. The Examiner does not
understand how the wrapper hidden portion is nested
within the inner surface of said wrapping material.
Is the Appellant referring to the elongated single,
unitary tape as
being the “wrapper hidden portion”? How can the
wrapper which is used to completely wrap the outer
surface of the article, as claimed, hide within
itself? [answer, page 4].
The examiner’s determination that claims 1 through 11 and
13 are indefinite for these reasons is not well taken. The
“adapted to be” terminology in the claims constitutes
functional language which merely defines the claimed packaging
assembly elements in terms of what they are intended to do.
Contrary to the position taken by the examiner, there is
nothing intrinsically wrong with the use of this technique in
drafting a patent claim. See In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971). The examiner’s additional
concern with the recitation in claim 1 of the “wrapper hidden
5
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