Appeal No. 1999-0033
Application No. 08/514,255
casing. Such attachment will inherently result in some restraint in a radial direction.
Accordingly we cannot agree that the German reference anticipates claim 8.
We also cannot sustain the § 102(e) rejection of claim 1 based on the O’Sullivan
patent. In order to anticipated this claim, it must be established that O’Sullivan’s disk
spring 56, which reacts against an end casing member 4 to axially bias the channel ring
members of the pump, is deformable to reduce the connecting rigidity in a radial
direction and/or a circumferential direction. The examiner has offered no adequate
explanation or evidence to support his finding (see page 7 of the answer) that
O’Sullivan’s disk spring 56 will reduce the connecting rigidity between the vane structure
50 and the end casing 4 in the radial or circumferential direction. Although O’Sullivan’s
disk spring 56 is deformable in an axial direction, it does not necessarily follow that it is
also deformable in the radial or circumferential direction to reduce the connecting rigidity
in the radial or circumferential direction to meet the terms of claim 1.
Under the provisions of 37 CFR § 1.196(b), the following new ground of
rejection is entered against claims 1, 5, 9 and 12:
Claims 1, 5, 9 and 12 are rejected under the second paragraph of 35 U.S.C. § 112
as being indefinite and hence failing to particularly point out and distinctly claim the
subject matter which appellants regard as their invention.
With regard to our new rejection under the second paragraph of § 112, it is
established patent law that the claims must define the metes and bounds of the invention
with a reasonable degree of precision. In re Venezia, 530 F.2d 956, 958, 189 USPQ 149,
151 (CCPA 1976). Moreover, the question of compliance with the second paragraph of
§ 112 requires a determination of whether those skilled in the art would understand what
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