Court Opinions
State Laws
|
Ex parte SHINBASHI et al. - Page 4
Legal Research Home >
Board of Patent Appeals and Interferences > 1997 > Ex parte SHINBASHI et al. - Page 4
Appeal No. 95-3710
Application 07/621,005
the details thereof.
OPINION
After a careful review of the evidence before us, we do not
agree with the Examiner that claims 6 through 8 and 19 through 23
are properly rejected under 35 U.S.C. § 103 as being unpatentable
over Appellants' prior art Figures 2 and 3. In addition, we fail
to find that the claims 6 through 8 are properly rejected under
35 U.S.C. § 112, second paragraph.
We turn first to the Examiner's rejection of claims 6
through 8 under 35 U.S.C. § 112, second paragraph. Analysis of
35 U.S.C. § 112, second paragraph, should begin with the
determination of whether claims set out and circumscribe a
particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F. 2d
1232, 1235, 169 USPQ 236, 238 (1971). Furthermore, our reviewing
court points out that a claim which is of such breadth that it
reads on subject matter disclosed in the prior art is rejected
under 35 U.S.C. § 102 rather than under 35 U.S.C. § 112, second
4
Page: 1 2 3 4 5 6 7 8
Last modified: November 3, 2007
|
|
