Appeal No. 2003-1472
Application No. 09/606,955
claim vague and indefinite, particularly if the claim is drafted in
terms of means clauses under 35 U.S.C. § 112, or if an element
performs more than one function or overlapping functions.”). See
also, In re Knowlton, 481 F.2d 1357, 1368, 178 USPQ 486, 494 (CCPA
1973); In re Kelley, 305 F.2d 909, 914, 134 USPQ 397, 401 (CCPA
1962). In the present case, we consider that the meaning of the
“motor for moving . . .” and “means for selectively changing . . .”
terminology of claim 17 is reasonably clear, especially when the
terminology in question is read in light of appellant’s
specification. Accordingly, we do not agree with the examiner’s
first reason for rejecting the claims under 35 U.S.C. § 112, second
paragraph.
The examiner’s next example of claim indefiniteness involves
the last paragraph of claim 17 that begins with the word “wherein.”
According to the examiner (answer, pages 3-4), it is not clear what
this limitation encompasses. More particularly, the examiner
posits (answer, page 9):
The indefiniteness issue lies in having clear antecedent
basis for the “means for selectively changing” to change
into the “third path of travel” and not in the
understanding of the “third path of travel” per se. . . .
[T]he “means for selectively changing” clause as set
forth in claim 17 only sets forth two different paths,
i.e., first and second. It is not until the last
“wherein” clause where the claim sets forth that the
changing means adjusts to the third path. Since the
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