Appeal No. 1998-0553
Application 08/405,372
appeal. For purposes of completeness and to avoid the wastage of resources
occasioned by piecemeal prosecution and review, we will assume that the § 112, second
paragraph, rejection is before us on this appeal. This rejection is set forth below.
Claims 27-40 stand rejected under the second paragraph of 35 USC § 112 for
failing to particularly point out and distinctly claim the subject matter which the appellants
regard as their invention. The file record reflects that the examiner considers this rejection
to be appropriate due to the “whereby” clause set forth in step (b) of appealed independent
claim 27.
Claims 27-40 also stand rejected under 35 USC § 103 as being unpatentable of
Fromm in view of Parrish.
We refer to the Brief and Reply Brief and to the Answer and final office action for an
exposition of the opposing viewpoints expressed by the appellants and by the examiner
concerning the above noted rejections.
OPINION
Neither of these rejections can be sustained.
Concerning the § 112, second paragraph, rejection, the statements made and
authorities cited by the examiner in the final office action and in the Answer provide no
basis for regarding the specific “whereby” language of appealed claim 27 as indefinite.
Moreover, we independently perceive no rational basis for considering this claim language
to offend the second paragraph of § 112. It follows that the examiner’s rejection of claims
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