Appeal No. 2001-0421
Application 08/926,835
We also take the opportunity to state that we are not making
a per se rule in regard to any specific claim language. We only
hold that the language used in claim 1, considered in the context
of the present record, is ambiguous and thus, indefinite.
Whether claims of similar format presented in a different case
meet the requirements of 35 U.S.C. § 112, second paragraph, will
have to be decided upon the facts of that case. The cases our
colleague cites at best provide further background as to the
issues we have raised. None are controlling either way.
Our colleague declines to express his views on the pending
prior art rejections because, in his view, to do so would be an
advisory opinion. This view is interesting since it is difficult
to discern how a dissenting opinion in and of itself is anything
but an advisory opinion. If our colleague would provide his
construction of claim 1 and with that construction in mind how he
would propose to decide the pending rejections, we would have a
basis to agree or disagree. Each of us is willing to listen and
be persuaded and it would only require a single changed vote to
transform the dissenting viewpoint to the majority. Regretfully,
our colleague has declined to do so.
Our colleague’s reticence to express his views on the merits
is puzzling also in that he has invited appellants and the
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007