Appeal No. 2003-1272 Page 6
Application No. 10/039,338
The appellants have not specifically contested these rejections in the brief or
reply brief.3 Accordingly, we summarily sustain both rejections of claims 18 to 34 under
the judicially created doctrine of double patenting.
The indefiniteness rejection
We will not sustain the rejection of claims 18 to 25 under 35 U.S.C. § 112,
second paragraph.
The basis for this rejection (answer, p. 4) is as follows:
the phrase "traction means" is vague and indefinite. The disclosed ribs are
readily found to be the corresponding structure described in the specification
(sixth paragraph of 35 U.S.C. 112) but the "equivalents" of the ribs in this art, as
ribs are defined by appellants, are not characterized. For this reason, the metes
and bounds of the claims are uncertain or indefinite.
As explained in In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49
(Fed. Cir. 1994), the USPTO is not exempt from following the statutory mandate of
35 U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed as a means or step
for performing a specified function without the recital of structure, material, or
3The discussion of these rejections on page 16 of the brief does not constitute an
argument pointing out any error in the rejections. Instead, the discussion points out the
error in the examiner rejections under 35 U.S.C. § 112.
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