Appeal 2007-0516
Application 10/438,506
1 The issue before us is whether Claims 3 and 4 are unpatentable under
2 35 U.S.C. § 112, ¶ 2, as indefinite
3 Principles of Law
4 An applicant must particularly point out and distinctly claim the
5 subject matter which the applicant regards as the invention. 35 U.S.C.
6 § 112, ¶ 2. Claims may be written in dependent form. 35 U.S.C. § 112, ¶ 3.
7 A dependent claim incorporates by reference the subject matter of the claim
8 or claims from which it depends. 35 U.S.C. § 112, ¶ 4. Whether a claim is
9 indefinite requires a determination whether those skilled in the art would
10 understand what is claimed when the claim is read in light of the
11 specification. Morton Int'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470,
12 28 USPQ2d 1190, 1194 (Fed. Cir. 1993). A claim is indefinite under § 112,
13 ¶ 2, if it is “insolubly ambiguous, and no narrowing construction can
14 properly be adopted.” Exxon Research & Eng'g Co. v. United States, 265
15 F.3d 1371, 1375, 60 USPQ2d 1272, 1276 (Fed. Cir. 2001);
16 Analysis
17 The Examiner correctly noted that Claims 3 and 4 depend on
18 cancelled Claim 2. Dependent claims incorporate by reference the subject
19 matter of the claims from which they depend. 35 U.S.C. § 112, ¶ 4. Since
20 Claim 2 has been cancelled the subject matter to be incorporated by
21 reference from that claim is not specified. Therefore, a person skilled in the
22 art would not be able to know what exactly applicant regards as the
23 invention. Therefore, Claims 3 and 4 are insolubly ambiguous. Claims 3
24 and 4 are indefinite.
25 Applicant does not assert that the claims are definite. Rather applicant
26 argues that the problem was corrected by the after-final amendment filed
27 October 25, 2005. However, the Examiner did not enter the amendment on
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