Appeal 2006-3004
Application 10/796,708
1 cannot be determined from the language of the claims with a reasonable
2 degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second
3 paragraph, is appropriate. Energizer v. ITC 435 F.3d 1366, 1370, 77
4 USPQ2d 1625, 1628 (Fed. Cir. 2006).
5 Thus, the failure to provide explicit antecedent basis for terms does
6 not always render a claim indefinite. As stated above, if the scope of a claim
7 would be reasonably ascertainable by those skilled in the art, then the claim
8 is not indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1146 (Bd. Pat.
9 App. & Inter. 1992).
10 With this as background, we analyze the specific rejections under
11 35 U.S.C. § 112, second paragraph, made by the examiner of the claims on
12 appeal.
13 Although the recitation in claim 1 of “said holes” lacks explicit
14 antecedent basis, when claim 1 is read in light of the specification it is clear
15 that claim 1 is reciting a hole in each of the tabs. In the same vein, when the
16 phrase “at least three of said tabs each including holes” is read in light of the
17 specification it is clear that it too recites a hole in each tab and that the use of
18 the word “holes” instead of “hole” is a typographical error. This is so
19 especially because the word “holes” is followed by the recitation “to receive
20 a threaded fastener” thereby clarifying that each of the tabs has just one hole
21 with one fastener within the hole. In view of the foregoing, we will not
22 sustain the Examiner’s rejection of claims 1, 4 and 5 under 35 U.S.C. § 112,
23 ¶ 2.
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Last modified: September 9, 2013