Appeal No. 2003-1402
Application No. 09/034,969
on U.S. Patent[s]” results in a failure to meet the requirement of 37 CFR § 1.321(b)(2);
i.e., a failure to “[s]pecify the portion of the term of the patent being disclaimed.”3
II. Section 112, second paragraph
Claims 1-24 and 30-33 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim the subject
matter which applicants regard as the invention.
We observe that the recitation “the order receipt location” in line 11 of claim 1
lacks proper antecedent basis in the claim. Upon review of the standing rejections over
the prior art, it appears that the examiner may have regarded the recitations of “order
receipt position” and “order receipt location” to refer to separate places, which seems to
be a reasonable interpretation of the literal language of the claims. At the oral hearing,
however, appellant’s representative stressed that the “position” and the “location” are
intended to refer to the same place.
Instant independent claims 1 and 20 refer to both an order receipt “position” and
an order receipt “location.” The claims thus appear to fail in particularly pointing out
and distinctly claiming the subject matter which applicants regard as the invention. We
therefore reject claims 1-24 under 35 U.S.C. § 112, second paragraph, but add that the
3 Any replacement or supplemental paper submitted by applicant as a terminal disclaimer should
be reviewed in the appropriate Technology Center for conformance with all requirements for filing a
terminal disclaimer in the USPTO. The two deficiencies we have noted are the reasons that we hold the
paper filed April 18, 2002 to be ineffective.
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