Appeal No. 1999-1081 Page 3
Application No. 08/458,983
No. 13) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No.12 ) and Reply Brief (Paper No. 14) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, the applied prior art references, the respective
positions articulated by the appellants and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
Dependent claim 17 recites the spline as being “adapted to be connected to the at
least one groove.” It is the examiner’s opinion that this renders the claim indefinite
because it is not clear whether the spline is actually connected to the building block
(Answer, page 4).
The purpose of the second paragraph of 35 U.S.C. § 112 is to insure that the public
is apprised of exactly what a patent covers, so that those who would approach the area
circumscribed by its claims may readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement and dominance. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). In the present case,
independent claim 1 is directed to a building block comprising a core, a cross strut through
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