Appeal 2006-3236
Inter Partes Reexamination Control No. 95/000,006
surface extending from said first wall surface in a direction away from said
first wall surface of said main body," in original claim 1, we interpret "said
second wall surface extending from said first wall surface" to mean the same
thing as "said second wall surface extending . . . in a direction away from
said first wall surface of said main body" for the reason stated by Patent
Owners, i.e., a "second wall surface that extends 'from' a first wall surface
inherently means that the second wall surface extends 'away' from the first
wall surface" (Patent Owners' Rebuttal Br. 9). Therefore, the limitation
"extending . . . in a direction away from said first wall surface of said main
body" could be deleted as redundant without broadening the claim. Because
the limitation has been changed to "extending . . . in a direction away from
said first surface of said main body," this adds a limitation that the second
wall surface extends "from" both the "first wall surface" and the "first
surface," which narrows the scope of original patent claim 1.
We conclude that claim 16 is not broader than original claim 1 in the
'595 patent. The rejection under 35 U.S.C. § 314(a) is reversed.
35 U.S.C. § 112, second paragraph
Rejection and arguments
The Examiner rejected claim 16 under 35 U.S.C. § 112, second
paragraph, as being indefinite, stating that "it is unclear what surface is being
relied on to be the first surface of the main body." Action Closing
Prosecution 15. The Examiner noted that the '595 patent describes an "upper
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