Appeal No. 1996-3670 Page 7
Application No. 08/217,063
3rd Ed., Sec. 706.03(d) refers to a negative limitation such as
‘non-poisonous’ or ‘non-alcoholic’ as not indefinite since it
leaves a single and definite alternative and may be the least
cumbersome way to express the limitation.” In re Bankowski, 318
F.2d 778, 783, 138 USPQ 75, 79 (CCPA 1963).
Here, although the expressions “without intervention of a
user” and “without significant input from a user” are negative
limitations, the examiner has not shown that either limitation
fails to define the invention. We agree with the appellant that
the limitations “do not state ‘what the invention is not.’”
(Appeal Br. at 25.) Therefore, we reverse the rejection of
claim 4 as indefinite. Regarding claim 7, we must still address
the fifth and sixth points of contention.
Fifth, with respect to claim 7, the examiner asserts, “it is
unclear what is meant by ‘significant input’ as there is no point
of reference provided to differentiate between significant and
insignificant." (Examiner's Answer at 4.) “[B]readth is not to
be equated with indefiniteness, as we have said many times.” In
re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).
Here, we recognize that the limitation “without significant input
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