Appeal No. 1999-2033 Page 7
Application No. 08/737,928
5
rejection and the examiner’s position seems reasonable on its face, we shall sustain this
rejection. Observing that the indefiniteness rejection is the only outstanding rejection of
claims 17 and 18, we offer the following recommendation under 37 CFR § 1.196(c).6
RECOMMENDATION UNDER 37 CFR § 1.196(c)
Amendment of claims 17 and 18 to change the term “said” before “cavity” to --a--
would overcome the indefiniteness rejection sustained herein. In light of the absence of
any other outstanding rejections of claims 17 and 18, these claims would appear to be
allowable if so amended.
CONCLUSION
To summarize, the decision of the examiner to reject claims 17 and 18 under the
second paragraph of 35 U.S.C. § 112 is affirmed and the decision of the examiner to
reject claims 12, 13 and 22-24 under 35 U.S.C. § 102 and claims 15, 19 and 25-31 under
35 U.S.C. § 103 is reversed. We also include a recommendation under 37 CFR §
1.196(c) of an amendment to claims 17 and 18 to overcome the indefiniteness rejection
sustained herein.
5Appellants attempted to amend claims 17 and 18 in an amendment (Paper No. 18) filed with the
reply brief, but the amendment was denied entry by the examiner (see Paper No. 19).
637 CFR § 1.196(c) provides that, where, as here, the Board includes an explicit statement that a
claim may be allowed in amended form, “appellant shall have the right to amend in conformity with such
statement which shall be binding on the examiner in the absence of new references or grounds of rejection.”
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