Appeal No. 96-0125
Application 07/878,100
corresponding to each of the claimed means should be interpreted
from the disclosure and compared to the apparatus of Humble. On
the present record we find that the means of claim 1 appear to be
obvious within the meaning of 35 U.S.C. § 103 in view of the
teachings of Humble. However, the structure which corresponds to
each of the claimed means is a question of fact which can be
disputed by appellants. This decision does not preclude
appellants from submitting additional evidence and/or arguments
which demonstrate that when claim 1 is interpreted consistent
with the last paragraph of 35 U.S.C. § 112 that the corresponding
structure and its equivalents is not rendered obvious by the
teachings of Humble. Thus, our decision presents a rebuttable
presumption that the apparatus of claim 1 is broad enough to be
suggested by the structure of Humble.
We designate this rejection as a new ground of rejection
because it represents a dramatic departure from the obviousness
issue as argued by the examiner and appellants. For purposes of
this new ground of rejection, we apply it only to independent
claim 1 which we view as the broadest claim on appeal before us.
We leave it to the examiner to consider the extent to which any
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