Appeal No. 2003-0083 4
Application No. 09/691,532
seen as two elements. Therefore, claims 7 and 15 are indefinite because
two elements are now being claimed as one element and this improperly
limits the invention.
. . . . [C]laims 7 and 15 clearly state that the “axle end plug is comprised of
said magnetic portion.” This limitation is understood to claim the axle end
plug and the magnetic portion as a single element. [Answer, page 4.]
We understand the examiner’s position to be that dependent claims 7 and 15 do
not comply with the requirements of the second paragraph of 35 U.S.C. § 112 because
they are seen as being directed to the Figure 4 embodiment (a debris extractor comprising
an axle end plug and magnetic portion formed, in the examiner’s words, as “a single
element”), whereas base claims 1 and 9 from which claims 7 and 15 respectively depend
are seen as being directed to the Figures 2, 3a and 3b embodiment (a debris extractor
comprising an axle end plug and a magnetic portion formed “as two elements”). From our
perspective, base claims 1 and 9 are broad in the sense that they encompass both of the
Figures 2, 3a and 3b embodiment and the Figure 4 embodiment. Hence, the
circumstance that claims 7 and 15 may be directed to subject matter wherein the axle end
plug and magnetic portion comprise what the examiner has characterized as “a single
element” is not improper. For this reason, we shall not sustain the standing rejection of
claims 7 and 15 under 35 U.S.C. § 112, second paragraph.
The 35 U.S.C. § 103(a) rejection
We take up first for consideration the examiner’s rejection of claim 1 as being
unpatentable over Ehrlich in view of Frehse.
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