Appeal 2007-0924
Application 10/401,079
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wolfe in view of Official Notice.
The Examiner provides reasoning in support of the rejection in the
Answer (mailed September 19, 2006). Appellant presents opposing
arguments in the Appeal Brief (filed November 16, 2005) and Reply Brief
(filed November 13, 2006).
OPINION
The indefiniteness rejection
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).
Appellant discloses a container (10 or 1100, for example) provided
with a cap (20 or 1105, for example) and housing an expandable or
extendable ribbon (30 or 1107, for example). The ribbon 30 can be biased
into the retracted position within the container by a spring 36, for example
(Specification ¶ 42). Other retraction mechanisms, disclosed for biasing the
ribbon 1107 into a storage position within the container, include a biased
rotating pin, spring mechanisms, elastic materials in the ribbon 1107, and
similar mechanisms (Specification ¶ 46).
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