Ex Parte KAWAGOE et al - Page 7



          Appeal No. 2000-0431                                       Page 7           
          Application No. 08/789,127                                                  

                          II. Claims 8-10, 22-25, and 29-32                           
               Under 37 C.F.R. § 1.196(b), we enter a new ground of                   
          rejection against claims 8-10, 22-25, and 29-32.  The second                
          paragraph of 35 U.S.C. § 112 requires that the specification                
          conclude “with one or more claims particularly pointing out and             
          distinctly claiming the subject matter which the applicant                  
          regards as his invention.”  “The test for definiteness is whether           
          one skilled in the art would understand the bounds of the claim             
          when read in light of the specification.”  Orthokinetics Inc., v.           
          Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081,             
          1088 (Fed. Cir. 1986).                                                      

               Here, independent claim 22 specifies in pertinent part the             
          following limitations:                                                      
               running along running lanes in a zigzag fashion by                     
               beginning at a starting Y coordinate, and, repeatedly;                 
               running along one of plurality of lanes in a                           
               Y direction, moving by a prescribed pitch in an                        
               X direction perpendicular to the Y direction, and                      
               running in one of a plurality of lanes in a direction                  
               opposite to the Y direction until the starting                         
               Y coordinate is reached;                                               










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