Appeal No. 1997-2184
Application 08/278,441
Claims 1, 3 through 7, 11 and 14 are rejected as failing
to comply with 35 U.S.C. § 112, second paragraph. Claims 1, 3
through 7, 10, 11, 14 and 17 through 19 stand rejected as
being unpatentable under 35 U.S.C. § 103 from Girard or Shen
et al. (either 3,888,902 or 3,954,852), any considered alone.
We reverse.
THE REFERENCES
The references of record which are being relied on as
evidence of obviousness are:
Shen et al. (Shen '902) 3,888,902 June 10, 1975
Shen et al. (Shen '852) 3,954,852 May 4, 1976
Girard et al. (Girard) 5,093,356 March 3, 1992
THE REJECTION UNDER 35 U.S.C. § 112
In rejecting appellants' claims under this section of the
statute, it is incumbent upon the examiner to factually
establish that one having ordinary skill in the art would not
have been able to ascertain the scope of protection defined by
the claims when read, not in a vacuum, but in light of the
supporting specification. In re Moore, 439 F.2d 1232, 1234,
169 USPQ 236, 238 (CCPA 1971); In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970). Thus, the examiner bears
the initial burden of establishing a prima facie case of
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