Appeal No. 1998-0631
Application 07/957,990
SCHAFER, Administrative Patent Judge, concurring
I fully concur with my colleagues’ opinion. However, I
write separately about the examiner’s rejection of claims 2-
8, 17-23, 31-44, 99-112 and 121-134 under 35 U.S.C. § 112, ¶
2 and the application of MPEP § 821. I would reverse the
rejection on the basis that the examiner has not made out a
prima facie case of indefiniteness and, thus, has not met
the applicable burden of proof necessary to maintain a
rejection under 35 U.S.C. § 112, ¶ 2. In my view, it is
unnecessary and inappropriate to review whether the rejected
claims read on the elected species since 1) that decision
relates directly to the correctness of the restriction
requirement and is petitionable rather than appealable, and
2) the examiner’s holding that claims 2-8, 17-23, 31-44, 99-
112 and 121-134 read on the elected species was overturned
in a petition to the examiner’s Group Director.
In rejecting the claims, the examiner cites and relies
upon on MPEP § 821. In pertinent part, this section
provides:
Because applicant believes the claims are
readable on the elected invention and the
examiner disagrees, the metes and bounds of
the claim(s) cannot be readily ascertained,
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