Appeal 2007-0870
Reissue Application 09/902,904
Patent 6,038,784
1. Is claim 2 indefinite under § 112, second paragraph?
Claim 2 recites an apparatus comprising, in relevant part, "a tray
having a bottom face that is adapted to be supported by an underlying
surface such as a counter-top. . .". The issue is whether use of exemplary
claim language ("such as") renders claim 2 indefinite under 35 U.S.C. § 112,
paragraph 2.
Appellants' Specification describes a tray having a bottom face that is
adapted to be supported by an underlying surface such as a counter-top (col.
2, ll. 1-3, and 56-58). Descriptions of examples or preferences, e.g., a
counter-top as a preferred underlying surface, are properly set forth in the
Specification rather than in the claims because stating examples or
preferences in the claims may lead to confusion over the intended scope of
the claim. Here, the phrase "such as" in claim 2 is indefinite because it is
unclear from Appellants' Specification whether the tray bottom encompasses
is adapted to be supported by both (a) a flat working surface, e.g., in the case
of a counter-top, or (b) a non-flat working surface, e.g., a ridged/channeled
drain board or a wire basket drain rack. A tray adapted to be supported on a
non-flat underlying surface might well have a complementary ridged bottom
surface to control undesirable tray movement on the underlying surface.
This claim language is analogous to the "material such as a rock wool or
asbestos" language that was found to be indefinite in Ex parte Hall, 83
USPQ 38, 39 (Bd. App. 1949) ("it is not clear whether the material is
actually rock wool or asbestos or some other material which for some
unexplained reason in the claim is like one or the other of these materials.").
Thus, it is unclear whether "such as" is intended to more narrowly define the
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