Appeal No. 98-0816
Application 08/286,287
rejected under 35 U.S.C. § 112, second paragraph, as failing to provide proper notice to the public as
to what is being claimed. This is based on the fact that should we reverse the art rejections of these
claims, as we have, the circumstance would exist that identical claims would issue as a result of the
prosecution of the instant application as compared with the claims in Connors and Jabbari, the only
difference lying in the interpretation of the means-plus-function limitations as are defined in the
specifications. We will not accept appellants’ invitation to make a new ground of rejection under the
notice provisions of 35 U.S.C. § 112, second paragraph, as this issue has not been fully briefed and
developed in the record before us. With respect to this issue, the examiner should take a course of
action the examiner deems appropriate upon receiving this application. That is, if the examiner deems
appropriate that a rejection of claims 35 and 36 should be made under the notice provisions of 35
U.S.C. § 112, second paragraph, then the examiner should reopen prosecution and so proceed.
In light of the foregoing, we find that the differences between the subject matter recited in claims
23 and 25 and the prior art are such that the claimed subject matter as a whole would have been
obvious within the meaning of 35 U.S.C. § 103. Accordingly, we sustain the standing rejections of
claims 23 and 25. We reach the opposite conclusion with respect to claims 1 to 17, 26, 27, 29, 30,
and 33 to 36. Accordingly, we reverse the standing rejections of these claims.
CONCLUSION
The decision of the examiner rejecting claims 23 and 25 under 35 U.S.C. § 103 is affirmed.
16
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007