Appeal No. 2005-0784
Application No. 10/138,315
correctly explained by the appellants, however, this claim term
does not permit the examiner to ignore claim requirements and
thereby to interpret claim 26 in a manner which is directly
contrary to the express language of the claim. This is because
such an interpretation would not be reasonable as required by
well established case law. For example, see In re Hyatt, 211
F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983).
The examiner also argues that “there is nothing in this
claim [i.e., claim 26], which indicates a resultant booklet in
this claim is not an intermediate booklet article” (answer, page
5). We discern no rationale or logic in the examiner’s apparent
belief that the claim 26 language “A method of manufacturing only
a single booklet . . .” may be somehow interpreted as describing
an intermediate booklet article. In any event, this argument is
also deficient in that the examiner fails to explain how such a
viewpoint leads to his determination that the single booklet and
single glue path limitations of this claim are in some way
satisfied by the multiple booklet and multiple glue paths of
Lyon.
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