Appeal No. 2001-2268
Application 08/922,581
made this rejection of the claims in the final rejection. The
basis for the rejection is that these claims are not directed to
the elected invention. In other words, the examiner finds that
because these claims are not directed to the elected subject
matter, the metes and bounds of these claims cannot be
ascertained, rendering the claims vague and indefinite [answer,
page 3].
Appellants argue that the examiner’s restriction
requirement and the withdrawal of claims 24-28 from further
consideration by the examiner were improper. Appellants assert
that since the restriction requirement was improper, the
rejection of the claims under 35 U.S.C. § 112 is also improper
[brief, pages 36-40].
Since the examiner has made a rejection of claims 24-28
even though they were supposedly withdrawn from consideration as
being directed to a non-elected invention, that rejection is
before us. Thus, the claims are not withdrawn from consideration
when the examiner has made a rejection of the claims. We will
not sustain this rejection of claims 24-28 because the examiner
has not made a case for indefiniteness. The fact that a claim
might be directed to a non-elected invention is totally unrelated
to the question of whether that claim particularly points out and
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