Appeal No. 2004-1304
Application 08/730,625
the examiner urges in the rejection (Paper No. 28) that 1) the
use of “such as” in claims 1, 9, 27 and 28 on appeal is vague and
indefinite; 2) the recitation of “said materials” in claim 9,
line 3, lacks antecedent basis; and 3) the recitation of “said
soft plastic material” in claim 23, line 2, has no proper
antecedent basis. With regard to the first issue, appellants
contend on page 7 of the brief that there is no real uncertainty
as to the scope of the claims on appeal as a result of the
inclusion of “such as,” since that terminology is being used not
to provide an example of a claimed structure or process, but to
provide a descriptive example of the intended use of the
structure recited. We agree.
As for the examiner’s questions regarding the noted
recitations in claims 9 and 23 lacking proper antecedent basis,
appellants indicate no real disagreement with the examiner’s
position, but also urge that each of the questioned recitations
is “not felt to render the respective claims indefinite to the
extent that it would be inoperative under § 112, second
paragraph” (brief, page 7). Appellants go on to contend that the
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