Appeal No. 2006-1189
Application 10/707,148
In reaching our decision in this appeal, we have given careful consideration to appellant’s
specification and claims, to the applied Marshall patent, and to the respective positions
articulated by appellant and the examiner. As a consequence of our review, we have made
the determination that the examiner’s above-noted rejection under 35 U.S.C. § 102(b) will
be sustained, but that the rejection under 35 U.S.C. § 112, second paragraph, will not. Our
reasons follow.
The examiner’s position concerning the rejection of claims 6, 9 and 10 under 35 U.S.C. §
112, second paragraph, is set forth on page 3 of the answer and further discussed on page
6 thereof. Essentially, the examiner is of the view that the recitation in claim 6 that the
barrier has a low profile top surface design “having a limited height which permits older
children and adults to step over” the barrier, renders the metes and bounds of the claim
uncertain, because it is unclear which children are older and which adults are capable of
stepping over. The examiner asserts that claim 6 does not appear to cover all instances for
all children and adults (able or disabled), and especially the elderly, and therefore the claim
would be uncertain and thus indefinite. On page 6 of the answer, the examiner contends
that there is no “standardized depth” which prevents an infant from attempting to cross the
barrier while still allowing older children and adults to step across, and further that the
specification and claims do not provide “the prerequisite to determine if one using the
method has obtained such depth.”
As set forth in 35 U.S.C. § 112, second paragraph, it is a requirement for obtaining a
patent that the specification must conclude with one or more claims “particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his invention.” In
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