Ex Parte SUZUKI et al - Page 18




                 Appeal No. 2002-2177                                                                                 Page 18                     
                 Application No. 08/777,424                                                                                                       


                 plurality of predetermined standard patterns, comprises intention input unit for inputting                                       
                 an intention for additionally correcting at least one of said plurality of layout image data                                     
                 of a layout result, and can re-select another one of said plurality of predetermined                                             
                 standard patterns on the basis of the intention input by said intention input unit. . . ."                                       
                 These limitations leave us in a quandary what the claim specifies for four reasons.                                              


                         First, we fail to grasp how the claimed "automatic layout unit" can "include" a                                          
                 step of "selection of one of a plurality of predetermined standard patterns."  Second, we                                        
                 are uncertain which claimed element "comprises" the claimed "intention input unit."                                              
                 Third, the relationship, if any, between the "said plurality of different image data" laid                                       
                 out by the "automatic layout . . . in accordance with a predetermined criterion" and "said                                       
                 plurality of layout image data of a layout result" escapes us.  Fourth, we are uncertain                                         
                 which claimed element "can re-select another one of said plurality of predetermined                                              
                 standard patterns on the basis of the intention input by said intention input unit."                                             


                         Accordingly, we are unpersauded that one skilled in the art would understand the                                         
                 bounds of the claims when read in light of the specification.  Therefore, we reject claim                                        
                 11 and claim 22, which depends therefrom under 35 U.S.C. § 112, ¶ 2.                                                             











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