Appeal No. 96-3404
Application 08/145,775
presented by the appellant taken as a whole fails to outweigh
the evidence of obviousness established by the prior art. See
Newell Companies Inc. v. Kenney Manufacturing Co., 864 F.2d
757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) and In re
Beattie, 974 F.2d 1309, 1313, 24 USPQ2d 1040, 1043 (Fed. Cir.
1992). This being the case we will sustain the rejections of
claims 2-6 and 8-16 under 35 U.S.C. § 103.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 7 is rejected under 35 U.S.C. § 112, second
paragraph. In order to satisfy the second paragraph of § 112,
a claim must accurately define the invention in the technical
sense. See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492-93 (CCPA 1973). Moreover, while the claim language of
claim 7 may appear, for the most part, to be understandable
when read in abstract, no claim may be read apart from and
independent of the supporting disclosure on which it is based.
See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA
1971). Applying these principles to the present case, we fail
to understand how the plurality of grooves can be considered
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