Appeal No. 2004-1021
Application No. 09/707,450
II. The 35 U.S.C. § 112, second paragraph, rejection of claim 25
Claim 25 depends from claim 3 and recites that “the step of
forming said suspension component includes forming said
suspension component at said locations of high stress.” The
examiner considers this recitation to be redundant with respect
to the subject matter recited in parent claim 3, unclear as to
how the suspension component can be formed at the locations of
high stress when such locations do not exist until after the
component is formed, and indefinite when read in conjunction with
the limitations in parent claim 3 (see page 4 in the answer).
On its face, claim 25 refers back to and further defines the
forming step set forth in parent claim 3. Thus, it is not
redundant in any meaningful sense of the word. Furthermore,
although the examiner’s criticism of the appellants’ recitation
of forming the component at the locations of high stress arguably
is sound since it is the forming, e.g., bending, of the component
which creates these locations (see page 4 in the specification),2
this relatively minor incongruity is not sufficient to render the
scope of claim 25 indefinite. The second paragraph of 35 U.S.C.
§ 112 requires claims to set out and circumscribe a particular
2 The examiner seemingly could have made the same criticism
of other of the appealed claims.
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