Appeal No. 2005-0970 Page 9
Application No. 09/918,760
In the rejections of claims 16 and 18-24 over Nureki and
claim 17 over Nureki in view of Barker the examiner makes the
same argument set forth with respect to the rejection of those
claims over Narita, and that argument is not convincing for the
reason given regarding the rejection over Narita. Accordingly,
we reverse the rejections of claims 16 and 18-24 over Nureki and
claim 17 over Nureki in view of Barker.
New grounds of rejection
Under the provisions of 37 CFR § 41.50(b) we enter the
following new grounds of rejection of claim 24.
Claim 24 is rejected under 35 U.S.C. § 101 and under
35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter which the
appellants regard as the invention.
The statutory categories under 35 U.S.C. § 101 are expressed
in the alternative, i.e., process, machine, manufacture or
composition of matter. Thus, the appellants’ claim 24, which
encompasses two statutory categories, i.e., apparatus and method,
violates 35 U.S.C. § 101. See Ex parte Lyell, 17 USPQ2d 1548,
1551 (Bd. Pat. App. & Int. 1990).
Moreover, it is unclear whether claim 24 claims an apparatus
or a method. Claim 24, therefore, is indefinite in violation of
35 U.S.C. § 112, second paragraph. See Lyell, 17 USPQ2d at 1552.
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