Appeal No. 1998-3271
Application No. 08/563,156
groups, i.e., claims 3 and 5, and to one claim, i.e., claim 21,
from among claims 21, 22, 25 and 28 which are separately
rejected.4 See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d
1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1997).
Rejection of claims 6, 20 and 32 under
35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of the
appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner argues that “[c]laims 6, 20 and 32 are
confusing since it is unclear how the feed block can be inboard
of the tip portion when applicant has recited the tip portion
exterior surface is part of the feed block” (answer, page 4).
The examiner, however, has not explained why the claim language,
as it would have been interpreted by one of ordinary skill in the
4 Claim 4 is separately rejected under 35 U.S.C. § 103 over Kasamatsu in
view of Chino. The appellants, however, provide no separate argument with
respect to this rejection but, rather, state that claim 4 stands or falls with
claim 3. We therefore do not separately address the rejection of claim 4 but,
rather, consider it to stand or fall with claim 3.
4
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