Appeal No. 2001-0205 Page 10
Application No. 08/692,016
appears in the specification. It is not apparent how one of ordinary skill in the art could,
without undue experimentation, “securely but detachably” retain the knots in the holes, nor
is there a description in the specification of “securely but detachably” retaining the knots
“within walls of said frame,” and it is not apparent how one of ordinary skill in the art would
accomplish this without undue experimentation. In any event, it is our view that this portion
of claim 16 is not supported in the original disclosure, and therefore fails to meet both the
description and the enablement requirements of section 112, first paragraph.
(2)
Claims 1, 2, 4-10 and 13-16 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
The preambles of independent apparatus claims 1 and 13 each state that the
invention is “[a] device for holding open and facilitating the filling of a trash bag” (emphasis
added). This would indicate that the claim is directed to the device and not to the
combination of the device and the bag it is intended to hold open. However, after setting
forth the structure of the device in the first paragraph of the body, the claims go on to
describe the trash bag and to relate the structure of the trash bag to the frame, which would
suggest that the claim is drawn to the combination of the frame and the bag. The second
paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a particular area
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