Appeal No. 2003-1654 Page 4
Application No. 09/439,310
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) and Ex parte
Scherberich, 201 USPQ 397, 398 (Bd. App. 1977).
It is not apparent to us why claim 4 must indicate what one would expect to gain
or gather as a result of the confirmation of establishment or non-establishment of
reports in order to meet the definiteness requirement. From our perspective, the failure
to recite what is done with that information is simply a matter of breadth, not
indefiniteness. Accordingly, we cannot sustain the examiner’s rejection of claim 4 under
the second paragraph of 35 U.S.C. § 112.
The anticipation rejection
We also shall not sustain the rejection of claims 1, 2 and 4 as being anticipated
by Eisner. Simply stated, we find in the portions of Eisner cited by the examiner no
teaching of establishing baselines for the “profit case”1 as called for in claim 1. While
Eisner discusses life-cycle costing on page 163, including consideration of research,
development, test and evaluation costs, acquisition and procurement costs and
operations and maintenance costs, Eisner makes absolutely no mention in this
discussion of costs of any consideration of or establishment of a baseline for profit,
either of the services provider or of the customer. The examiner’s apparent attempt on
1 We note that neither claims 1, 2 and 4 nor appellants’ underlying disclosure indicates whose
profit case (the service provider or the customer) baseline is established. Thus, this claim limitation would
be met by the establishment of a baseline for the profit case of either party.
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