Appeal No. 96-4005
Application 08/183,531
with Appellant that the Examiner has not established a prima facie case of obviousness and, therefore,
we can not sustain the 35 U.S.C. § 103 rejection of claims 2 and 5.
With respect to dependent claim 4, the Examiner has included this claim in the 35 U.S.C. § 103
rejection despite the fact that its dependency from a canceled claim makes it impossible to make a
comparison between what is claimed and the prior art. Were we to consider this claim on the merits it
would fall with claim 1 since Appellant has provided no separate argument with respect to the claim
limitations. However, we will summarily reverse this rejection since a claim which can not be
completely understood cannot, logically, have prior art applied against it. By making this technical
reversal of the prior art based rejection of claim 4, it should not be implied that the art relied on by the
examiner would not be relevant relative to a claim of the present scope containing clear dependency. In
re Steele, 305 F.2d 859, 862-863, 134 USPQ 292, 295 (CCPA 1962).
In summary, the rejection of claim 4 under 35 U.S.C. § 112 is sustained. The 35 U.S.C
§ 103 rejection is sustained with respect to claim 1 but is not sustained with respect to claims 2, 4, and
5. Accordingly, the decision of the Examiner rejecting claims 1, 2, 4, and 5 is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be
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