Appeal No. 2002-1163
Application 09/393,374
862, 134 USPQ 292, 295 (CCPA 1962). We hasten to add that this
reversal of the examiner's rejection is not based on the merits
of the rejection, but only on technical grounds relating to the
above-noted indefiniteness of the appealed claims.1
Based on the foregoing, the examiner's rejection under
35 U.S.C. § 103(a) of the appealed claims has been reversed for
technical reasons. A new ground of rejection of claims 1 through
14 under 35 U.S.C. § 112, second paragraph, has been added
pursuant to 37 CFR § 1.196(b).
1 As mere guidance to the examiner and appellant, we note
that it would appear that if the ambiguity of the multiple ranges
set forth in the claims on appeal were to be eliminated, i.e, by
reciting in claim 1 a self standing putter having a putter head
having “a mass of fourteen ounces” and a shaft and grip having a
combined mass of “less than three ounces,” and in claim 6 a self
standing putter having a putter head having “a mass of fourteen
ounces,” a striking face which “extends four inches in a
substantially horizontal plane,” and a foot surface on the putter
head which defines an area of “at least eight square inches,”
then the claims would define over the prior art currently applied
by the examiner, since that prior art provides no teaching or
suggestion for selecting the specific multiple parameters of
claims so amended. Further in that regard, it does not appear to
us that the examiner has even attempted to specifically address
the angle of the putter shaft in appellant’s claims in the
rejection set forth on appeal. As an additional point, we note
that the examiner’s apparent attempt to introduce a new ground of
rejection in the examiner’s answer (page 7) is entirely improper.
10
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