Appeal No. 2004-1144
Application No. 09/584,765
In applying these legal principles, the examiner has
determined that dependent claims 41, 44 and 47 offend the second
paragraph of section 112 because they exclude nickel and/or
aluminum from the intermetallic alloy recited therein whereas
parent independent claim 33 requires both nickel and aluminum to
be present in the intermetallic alloy defined thereby.3 That is,
the examiner has interpreted the claim 33 language in light of
the appellant’s specification disclosure as requiring the
presence of nickel and aluminum in the claimed intermetallic
alloy as more fully explained in the answer (e.g., see the
paragraph bridging pages 14 and 15). Certainly, this claim
interpretation is reasonable and consistent with the subject
specification (cf. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983)), and the appellant does not contend
otherwise with any reasonable specificity. Instead, the
appellant’s sole response to the examiner’s claim interpretation
analysis is to quote the language of claim 33 and to then state
without embellishment or explanation that “claim 33 does not
require [Ni or Al]” (brief, pages 9 and 10).
3
3 Under the examiner’s above noted theory, these dependent
claims also could have been objected to under 37 CFR § 1.75(c)
for failing to further limit parent claim 33.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007