Appeal No. 2003-0931
Application 09/383,508
MCQUADE, Administrative Patent Judge, dissenting-in-part.
The majority’s affirmance of the examiner’s rejection is
well founded for the reasons expressed above. The accompanying
recommendations under 37 CFR § 1.196(c), on the other hand, are
unwarranted and ill advised.
In the final rejection (Paper No. 16), the examiner invited
the appellants to revise the claims (and implicitly the
specification) to overcome the now affirmed 35 U.S.C. § 112,
second paragraph, rejection. The appellants chose not to do so,
and instead filed a response (Paper No. 17) insisting that the
claims were definite as is because “it would be plainly apparent
to the skilled artisan that the specification uses the terms
‘bay’ and the phrase ‘docking location’ interchangibly [sic] and
synonymously” (page 2). In their brief (Paper No. 20), the
appellants again urged that the claims were definite, but this
time argued that “bays” were examples of “docking locations” (see
page 2), that “the assertedly confusing limitations define
different claim limitations, rather than the same feature” (page
5), and, in the same vein, that “the limitations are directed to
two different features” (page 5). These inconsistencies in the
appellants’ arguments mirror the inconsistencies in the
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