Appeal No. 1999-2241
Application No. 08/714,914
or caps" appearing in, for example, appealed claim 33 renders
indefiniteness. Specifically, the examiner held (examiner's
answer, page 4):
The expression "any end cap or caps" (e.g. claim
33, line 2) is indefinite in that it is unclear whether
an end cap is claimed or not. Note that claim 33
depends upon claim 24, which recites an end cap at line
6. Thus, claim 33 would appear to "unclaim" subject
matter already recited in a parent claim. The
expression is also vague for a dependent claim whose
parent claim does not recite any end cap, because it
makes no sense to further define an element when that
element is not claimed in the first place.
We hold that the examiner's position is not tenable for the
reasons stated in the appeal brief at pages 3-4. We only add
that claim 33, which depends from claim 24, cannot "unclaim" any
element that is recited in any base claim, because "[c]laims in
dependent form shall be construed to include all the limitations
of claim incorporated by reference into the dependent claims."
See 37 CFR § 1.75(c) (1996).
Accordingly, we cannot uphold the examiner's rejection on
this ground.
Rejection under 35 U.S.C. § 103(a)
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