Appeal No. 2002-2319 Page 9
Application No. 09/129,197
would engage the fingertips of a patient’s hand might meet the length limitation by
having a lesser panel length than the length from the patient’s elbow end to the
fingertips while another sling having a member which would engage the portion of a
patient’s hand between the thumb and fingers might meet the length limitation by
having a lesser panel length than the distance from the patient’s elbow end to said
portion, for example, simply gives the scope of the claim breadth. It does not render
the claim indefinite.
For the foregoing reasons, we conclude that none of the criticisms of claim 19
raised by the examiner renders the claim indefinite. Accordingly, we shall not sustain
the examiner’s rejection of claim 19 under the second paragraph of 35 U.S.C. § 112.
The rejection under 35 U.S.C. § 101
The examiner considers claim 19 to be directed to non-statutory subject matter
because, according to the examiner, it positively recites the arm, elbow and hand of the
patient as integral components of the sling (answer, page 4). The examiner cites as
authority for this position Ex parte Grayson, 51 USPQ 413, 414 (Bd. App. 1941) (claim
directed to a shrimp with certain parts removed considered to be still in its natural state
and thus not an article of manufacture and not patentable subject matter). Specifically,
the examiner is concerned that the claim recites a sling “applied over and supporting an
arm of a patient,” the sling comprising a panel “defining a trough receiving and
supporting the arm so that an elbow end of the arm is disposed at the closed end and a
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