Appeal No. 2001-2288
Application 09/175,570
I. The 35 U.S.C. § 112, second paragraph, rejection
The examiner considers claim 1, and claims 2, 6, 9 and 11
which depend therefrom, to be indefinite because
[i]n reference to claim 1, the phrase “for
accepting a corresponding plurality of adhesive
roach traps ... the plurality of adhesive roach
traps being placed ...” renders the claim vague and
indefinite since later in the claim “a plurality of
adhesive roach traps, each of the plurality of
adhesive roach traps being slidably ...” is set
forth later in the claim.
It is unclear whether applicant is attempting to
functionally recite the location of the adhesive
traps in the former phrase or positively recite the
structure and location of the adhesive traps. In
addition, both phrases attempt to claim the same
subject matter and is somewhat redundant [Paper No.
15, page 2].
A fair reading of claim 1 indicates that the adhesive
roach traps are mentioned first in the context of defining the
stanchions and the associated spaces in terms of their
intended function or use, and then in the context of being2
set forth in a positive manner as part of the claimed
combination. While this sequencing may be somewhat unusual,
it does not render the claim, read as a whole and in light of
2There is nothing intrinsically wrong with the use of
functional language in a claim to define something by what it
does rather than by what it is. In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981); In re Swinehart, 439 F.2d
210, 213, 169 USPQ 226, 228 (CCPA 1971).
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007