Appeal No. 1999-2122
Application No. 08/564,659
example, claim 135 and claims 136 and 166 which depend therefrom
are directed to an apparatus and yet inconsistently refer back
(at least ultimately) to parent claim 131 which is directed to a
method. In effect, these dependent apparatus claims are non-
sequiturs with respect to parent method claim 131, and thus it is
unclear how and to what extent these dependent apparatus claims
further restrict the parent method claim. These infirmities are
also present in claims 168, 177 and 178 because dependent apparatus
claim 168 refers back to parent method claim 145, dependent method
claim 177 refers back to parent apparatus claim 132 and dependent
apparatus claim 178 refers back to parent method claim 127.
Under the circumstances recounted above, we exercise our
authority pursuant to 37 CFR § 1.196(b) and hereby reject claims
135, 136, 166, 168, 177 and 178 under the second paragraph of
35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which the Appellant regards
as his invention.
Moreover, because no reasonably definite meaning can be
ascribed to these indefinite claims, they cannot be regarded as
obvious under § 103. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ
494, 496 (CCPA 1970). Also see the Manual of Patent Examining
Procedure § 2143.03 (Aug. 2001). It follows that the Examiner’s
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