Appeal No. 2001-0242
Application No. 09/183,114
supporting disclosure on which they are based. See In re Cohn, 438
F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we are of the
opinion that the recitations of “backing material according to
claim 16" in claims 2 through 15 and “tackifiers such as oils,
waxes, resins and mixtures thereof, preferably mixtures of resins
and oils” in claim 5 introduce uncertainty into the claims which
would preclude one skilled in the art from determining the metes
and bounds of the claimed subject matter. In this regard, we
observe that claim 16 is directed to an adhesive tape having a
backing material as one of its components. In contrast to the
actual subject matter recited in claim 16, claims 2 through 15,
state in their preamble the “[b]acking material according to claim
16". Thus, it is not clear from the specification and the claims
in question whether the appellants intend to limit the claims to
the adhesive tape according to claim 16 consistent with the fourth
paragraph of § 112 or just any backing material (without, e.g.,
adhesives) which is part of the adhesive tape of claim 16.1
1 The fourth paragraph of 35 U.S.C. § 112 requires dependent
claims to further limit their parent claim. Thus, if the
appellants’ intent is to recite a backing material rather than an
adhesive tape, such a recitation may violate the fourth paragraph
of 35 U.S.C. § 112.
5
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