Appeal No. 2006-0406
Application 09/497,865
DISCUSSION
New ground of rejection under 37 CFR § 41.50(b)
Claims 7-12 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for being functional. The wherein
clause "wherein the antenna is able to lock onto a second
equatorial satellite in the constellation before handing over
from a first equatorial satellite" in claim 7 is functional
because we do not find any structure or "means" in the claim to
perform the function. A "wherein" clause is like a "whereby"
clause. A "whereby clause" is used (1) to indicate that the
structure or elements previously enumerated will necessarily give
the result which follows the term "whereby," in which case no
further structural limitations are implied, or (2) where it is
desired to imply that certain forms of structure set forth will
give the desired result, other forms will not, and that the claim
is intended to cover only such forms as will give the desired
result, in which case structural limitations to the enumerated
structure are implied. However, here it is not clear what
structure in the claim performs the recited function.
Grouping of claims
Appellants argue that the claims are separately patentable
(Br3). Nevertheless, the regulations in effect at the time the
brief was filed required that an argument be provided why the
claim is separately patentable and that merely pointing out
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