Appeal No. 2005-1315 Παγε 5
Application No. 09/972,533
The claim language “expanding means” in claims 39, 40, 49 and 50 is
problematic for two reasons. First, the appellant’s simple recitation in the brief of
language in claims 1 and 45 to which “said expanding means” purportedly refers does
not answer the question as to what recited structure (i.e., the base member, the ridge
member or the combination of the ridge member and base member) in claim 1
corresponds to the “expanding means.” Furthermore, in this case, the lack of
antecedent basis for “said expanding means” is more than just an inconsequential
inconsistency in claim language. The terminology “expanding means” referred to in
claims 39, 40, 49 and 50 certainly appears on its face to be a means-plus-function
recitation under 35 U.S.C. § 112, sixth paragraph; however, neither claim 1 nor claim 45
recites a means-plus-function limitation. Accordingly, it is not clear to what “said
expanding means” in claims 39, 40, 49 and 50 refers, leaving the scope of these claims
indefinite.
The anticipation rejections
We recognize the inconsistency implicit in our holding that claims 39, 40, 49 and
50 are rejectable under 35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the invention with a holding that these claims are
anticipated by Fisher or Smith. Normally, when substantial confusion exists as to the
interpretation of a claim and no reasonably definite meaning can be ascribed to the
terms in a claim, a determination as to patentability under 35 U.S.C. § 102 or 103 is not
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