Appeal No. 1998-2043
Application No. 08/606,601
guiding member. Accepting the underlying premise of the rejection at face value -- that 35
U.S.C. § 112, second paragraph may require that the claims contain elements that the
1
disclosure teaches as being critical or essential -- the things alleged to be critical are not
relevant to the subject matter of claims 7-10. The principal reason that the disclosed
“movements” are not required to be present in claim 7 is that claim 7 is drawn to an
apparatus, rather than a process. (Compare method claim 11, which has not been
rejected for indefiniteness.) Claim 7 positively recites a “rotary drum,” a “cassette
mounting member,” and “first and second tape guiding members.” The cassette mounting
member is “supported for movement” between two positions with respect to the rotary
drum, and the first and second guiding members are also “supported for movement” to
wrap the tape around the drum. The structures set forth are thus consistent with the
“movements” described in appellants’ disclosure.
Claim 7 ends with a “wherein” clause that serves to further limit (“at least”) the first
tape guiding member. The clause may be read to refer, at least indirectly, to movements
which are required in practicing the disclosed process. However, whatever may be
required in the process, the “wherein” clause of claim 7 limits structure of the tape guiding
members, rather than setting out the method for practicing appellants’ invention.
Thus, in our view a proper interpretation of claim 7 results in the conclusion that the
claim sets forth an apparatus, and the recital of “movements” in the claim is not required for
1The examiner has cited no authority in support of the underlying premise.
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