Appeal No. 1999-1455
Application 08/753,556
views between the brief and reply brief, and the disclosed invention. As disclosed, the
segments are not just merely parallel but they must be "connected in parallel." As such, the
subject matter set forth in the claims on appeal does not particularly point out and distinctly
claim what appellants regard as their invention. In effect, appellants have attempted by
claims 7 through 10 to base their patentability determinations on the recitation of the
segments being merely parallel. In doing so, the search for breadth has in effect yielded
indefinite claims.
In view of the foregoing, we have reversed the outstanding rejection of claims 8
through 10 under the second paragraph of 112 on the merits and have pro forma reversed
the rejection of claims 7 through 10 under 35 U.S.C. § 103. We have also instituted a
rejection of claims 7 through 10 under the second paragraph of 35 U.S.C.
§ 112.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be considered final
for purposes of judicial review.”
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