Appeal 2007-0313
Application 10/414,447
permitted. . . . In order to obviate the rejection, the XRD data or the DSC
data of Fig. 1, 2, 3, or 4 must be inserted into the claims.” (Answer 6.)
Appellants argue that the Examiner’s reliance on Ex parte Fressola,
27 USPQ2d 1608 (BPAI 1993), is misplaced (Br. 5). Appellants argue that,
unlike the present case, the claim in Fressola was a so-called “omnibus
claim” (a “system . . . as disclosed in the specification and drawings herein”)
(id.). Appellants also argue that the present case falls into the exception
permitted under Fressola, in that “there is no conceivable manner of
reducing an X-ray diffraction pattern or differential scanning calorimetry
curve into words, and inserting the entire pattern or curve into a claim will
not be practical” (id. at 6).
We agree with Appellants that the reference to figures in claims 3, 5,
9, and 11 does not render them indefinite. “Incorporation into the claims by
express reference to the specification and/or drawings is not permitted
except in very limited circumstances.” Fressola, 27 USPQ2d at 1609. Such
incorporation is permitted, however, “where there is no practical way to
define the invention in words and where it is more concise to incorporate by
reference than duplicating a drawing or table into the claim.” Id.
The circumstances of this case fall squarely within the exception
defined in Fressola: there is no practical way to define in words the patterns
and curves shown in the figures, and it is more concise to incorporate by
reference than to duplicate the figures in the claims. The rejection of claims
3, 5, 9, and 11 for indefiniteness is reversed.
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