Appeal No. 1999-1655
Application No. 08/722,904
35 U.S.C. § 112, SECOND PARAGRAPH
Here, the examiner maintains that the presence of a single misspelled word in each of
the independent claims that makes the claims indefinite under 35 U.S.C. § 112, second
paragraph, and therefore lacks particularity and distinctness with respect to the claimed
invention. We disagree with the examiner. Here, the scope and content of the claims are
clear, and the examiner even provided the correct spelling in the office action. Therefore
we find that these errors in the claims do not form an appropriate basis for a rejection
under the statute, but the examiner may consider an objection under 37 CFR 1.75(a) or
correct the obvious typographical errors by examiner’s amendment. Therefore, we will not
sustain the rejection of claims 1-4 under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103
“To reject claims in an application under section 103, an examiner must show an
unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34
USPQ2d 1210, 1214 (Fed. Cir. 1995). In the absence of a proper prima facie case of
obviousness, an applicant who complies with the other statutory requirements is entitled to
a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima facie case with
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