Appeal No. 2003-0534 Page 3
Application No. 09/650,014
the rejection of claims 1 to 11 under 35 U.S.C. § 112, second paragraph, for the
reasons which follow.
Under 35 U.S.C. § 112, second paragraph, a specification shall conclude with
one or more claims "particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention." Determining whether a claim is indefinite
requires an analysis of "whether one skilled in the art would understand the bounds of
the claim when read in light of the specification. . . . If the claims read in light of the
specification reasonably apprise those skilled in the art of the scope of the invention,
[section] 112 demands no more." Miles Lab., Inc. v. Shandon Inc., 997 F.2d 870, 875,
27 USPQ2d 1123, 1126 (Fed. Cir. 1993), cert. denied, 114 S. Ct. 943 (1994); see also
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81,
94-95 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).
The examiner's basis (answer, p. 3) for the rejection of claims 1-11 under
35 U.S.C. § 112, second paragraph, for being incomplete is as follows:
The preamble of claims 1-11 indicates that the invention is a slat conveyor not a
portion of a slat conveyor. The disclosed slat conveyor has vertically movable
slats 10 that lift the load and horizontally movable slats 12 that move the load
horizontally. The cooperation of the two types of slats conveys the load. If only
one type of slat were to be used, the load would not be conveyed along the slats
but would only sit in the same location on the slat. However, there is no mention
of the horizontally movable conveyor slats 12 in the claims. The conveying slats
12 must be claimed along with the combination in the claims for the claimed
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