Appeal No. 2006-2284 Page 17
Application No. 09/912,211
shelf report of figure 7 of Bowers does not provide a 'number of members . . . present
within said container,' contrary to the Examiner's assertion. The content provided in the
shelving report is not enough by itself to teach or suggest the above-quoted feature."
(Reply Br. at 8.)
a. Claim Construction
"Claims in dependent form shall be construed to include all the limitations of the
claim incorporated by reference into the dependent claim." 37 C.F.R. § 1.75 (2006).
Here, claim 51 recites in pertinent part the following limitations: "[t]he method of
claim 33 wherein said analysis determines the number of members of said subset
present within said container." For its part, claim 33 recites in pertinent part the
following limitations: [a] method for identifying a subset of objects within a set of objects
in a container, said method comprising . . . analyzing and processing said received
signal. . . ."2 The independent claim does not require the method be performed
exclusively by a computer; the claim permits the method to be performed by a human in
concert with a computer. Giving the dependent claim the broadest, reasonable
2 A claim is indefinite "where the language ‘said lever’ appears in a dependent claim
where no such ‘lever’ has been previously recited in a parent claim to that dependent
claim . . . ." Ex parte Moelands, 3 USPQ2d 1474, 1476 (B.P.A.I. 1987). Here, although
claim 51 includes the language "said analysis," no such "analysis" has been previously
recited in claim 33. Being "basically a board of review," Ex parte Gambogi, 62 USPQ2d
1209, 1211 (B.P.A.I. 2001), however, we leave the question of indefiniteness to the
examiner and the appellants.
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