Appeal No. 1998-2169
Application No. 08/610,069
techniques because it does not require surface finishing by
turning.” (page 2 of principal brief).
Appealed claims 18 and 19 stand rejected under 35 U.S.C.
§ 112, second paragraph. In addition, all the appealed claims
stand rejected under 35 U.S.C. § 103 as being unpatentable
over JP ‘010 in view of Honda.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejections.
We consider first the examiner’s rejection of claims 18
and 19 under 35 U.S.C. § 112, second paragraph. According to
the examiner, the language of claim 18 is indefinite “because
it is unclear how the photoconductor is ‘used’ in the instant
claims” i.e., “[i]t is unclear if this is an intended use (in
which case it provides no positive limitation to the claims),
a functional limitation to the photoconductor, or an attempt
to draft an apparatus claim.” (page 3 of answer). In
response, appellant maintains that the term “used” is not a
recitation of intended use but “can be considered as
containing a functional limitation” (page 5 of principal
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