Appeal No. 97-2597
Application 08/176,056
is no basis supporting position that a patent applicant’s
evidence and/or argument traversing rejection must be
contained within specification in order to be considered).
Concerning the examiner’s reliance on the breadth of Boland’s
claim 1 in support of her conclusion of obviousness, the
circumstance that a prior art claim may be broad enough to
read on a claimed invention does not require a conclusion of
obviousness since a patent’s claims are not a technical
description of the disclosed invention. See In re Benno, 768
F.2d 1340, 1345-46, 226 USPQ 683, 686 (Fed. Cir. 1985) and In
re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577, n.5, 224
USPQ2d 617, 625, n.5 (Fed. Cir. 1985).
In light of the foregoing, we will not sustain the
examiner’s rejection of claim 29 as being unpatentable based
on the combined teachings of Boland and Proxmire.
As to the examiner’s rejection of claims 30-32, the
tertiary references, i.e., Wolf and Miller, applied in this
rejection have been carefully considered but do not render
obvious what we have found to be lacking in Boland and/or
Proxmire. It follows that the standing § 103 rejection of
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