Appeal 2007-0756
Application 10/652,853
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection.
Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the
invention.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir.
1986) (citations omitted). A claim may be invalid for indefiniteness if it is
“insolubly ambiguous” and not “amenable to construction.” Exxon Research
& Eng'g Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272, 1276
(Fed. Cir. 2001).
Claim 4 recites the control valve units including normally open
solenoid valves and then goes on to recite that the normally closed solenoid
valves are aligned on the base so as to protrude their solenoid sections from
one face of the base. There is no antecedent basis in claim 4 for normally
closed solenoid valves. Appellants’ Specification discloses both normally
open valves 6A through 6D and normally closed valves 9A through 9D in
the control valve units (Specification 8:14-17 and Fig. 1) and additionally
discloses normally open valves 5A and 5B in the regulators and normally
closed suction valves 12A and 12B (Specification 11:5-8). All of the
disclosed valves appear to be aligned on the base 22 so as to protrude their
solenoid sections from one face of the base. Accordingly, one of ordinary
skill in the art would not understand what is claimed when claim 4 is read in
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