Appeal No. 1999-0711 Page 10
Application No. 08/876,869
Accordingly, we shall not sustain the examiner's rejection of independent claim 48, or
claims 49, 52 and 53 which depend from claim 48, under 35 U.S.C. § 103 as being
unpatentable over Matsumoto in view of Horning.4
As to the examiner's rejections of claims 11 and 55-57, which also depend from claim
48, we have reviewed the teachings of Ratledge and Stragier, but find nothing therein which
overcomes the above-noted deficiency of the combination of Matsumoto and Horning.
Accordingly, we also shall not sustain the examiner's 35 U.S.C. § 103 rejections of claim 11 as
being unpatentable over Matsumoto in view of Horning and Ratledge and of claims 55-57 as
being unpatentable over Matsumoto in view of Horning and Stragier.
CONCLUSION
To summarize, the decision of the examiner to reject claims 48, 49, 52, 53 and 55-57
under the judicially created doctrine of obviousness-type double patenting is affirmed. The
examiner's decision to reject claims 11, 48, 49, 52, 53 and 55-57 under 35 U.S.C. § 103 is
reversed. The examiner's decision is affirmed-in-part.
4It is elementary that to support an obviousness rejection, all of the claim limitations must be taught or
suggested by the prior art applied (see In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 582 (CCPA 1974)) and that all
words in a claim must be considered in judging the patentability of that claim against the prior art (In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007