Appeal No. 2002-0220 Page 7
Application No. 08/964,496
NEW GROUND OF REJECTION
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new
ground of rejection.
Claims 17-20 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the invention.
The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994).
In claim 17, it is not clear what is meant by “attachment means disposed in the
frame.” While this attachment means might appear to correspond to the suction cups
disclosed in appellant’s specification, such structure is disclosed as being supported or
disposed on the frame and not in the frame (see, for example, Figures 3 and 5). As
such, this limitation presents an inexplicable inconsistency with the underlying
disclosure and thus renders the claim indefinite.4 Moreover, “the housing” lacks
antecedent basis in the claim. While we might speculate that “the housing” is intended
to refer to the tool or to the frame, this uncertainty renders the scope of the claim
indefinite. Finally, the language “channel support means” would seem to describe a
structure which supports a channel and thus does not appear to accurately describe
any structure disclosed in appellant’s specification. Consequently, one of ordinary skill
4 See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
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