Appeal No. 2004-0323 Page 11
Application No. 09/716,045
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph,
is appropriate.
Furthermore, appellants may use functional language, alternative expressions,
negative limitations, or any style of expression or format of claim which makes clear the
boundaries of the subject matter for which protection is sought. As noted by the Court
in In re Swinehart, 439 F.2d 210, 213-14, 169 USPQ 226, 228-29 (CCPA 1971), a claim
may not be rejected solely because of the type of language used to define the subject
matter for which patent protection is sought.
With this as background, we analyze the specific reasons (second Office action,
pp. 4-5) set forth by the examiner in the rejection under 35 U.S.C. § 112, second
paragraph:
Regarding claim 2, the features encompassed by "...diameter of said
column of air is variable within said chamber" can't be determined.
Regarding claim 4, the structural features encompassed by the phrase
"optionally provided" can't be determined.
Regarding claims 7 and 12, the phrase "certain ones of the fans being
turned off so that the only ones of said fans being operated are within the then
current diameter of said chamber" renders the claim indefinite. It is unclear as
why some of the fans would be turned off since the claim is dependent from
claim 1 which claims only one chamber with one diameter, therefore it would
stand to reason that all the fans remain on.
Regarding claim 10, there is no antecedent basis for "said inner wall".
Regarding claim 13, the structural features encompassed by the phrase
"curtain wall' [sic, "] can't be determined. It is unclear as to what features define a
curtain wall.
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