Appeal No. 2003-0534 Page 4
Application No. 09/650,014
structure to operate as a slat conveyor. The structure currently claimed will not
function as a slat conveyor because the article will only be moved vertically to
and from its original position on the lifting slats, which is not conveying.
The appellants argue (brief, pp. 4-8; reply brief, pp. 2-3) that claims 1 to 11 are
definite as required by the second paragraph of 35 U.S.C. § 112. The appellants assert
that it has long been held that it is entirely consistent with the claim definiteness
requirement to present claims reciting only one or more elements of the invention.
Thus, it is not necessary that a claim recite each and every element needed for the
practical utilization of the claimed subject matter. See Carl Zeiss Stiftung v. Renishaw
plc, 945 F.2d 1173, 1181-82, 20 USPQ2d 1094, 1101 (Fed. Cir. 1991); Bendix Corp. v.
United States, 600 F.2d 1364, 1369, 204 USPQ 617, 621 (Ct. C. 1979).
The examiner chose not to further respond to the argument of the appellant
raised in the brief (see answer, p. 3).
In our view, claims 1 to 11 are definite as required by the second paragraph of
35 U.S.C. § 112 for the reasons adequately set forth by the appellants in the briefs.
While claims 1 to 11 do not specifically claim conveyor slats, these claims do
reasonably apprise one skilled in the art of the metes and bounds of the claimed
subject matter. In fact, the examiner has not set forth any explanation of why these
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