Ex parte ORLOWSKI et al. - Page 4

          Appeal No. 94-3960                                                          
          Application 07/997,489                                                      

          1989)(when the introductory words of a claim, the preamble, do              
          give life and meaning to the invention claimed, those words                 
          constitute additional structural limitations); In re Geerdes,               
          491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974)("every                   
          limitation in the claims must be given effect...").  Failure                
          to consider the meaning of "a donor roll" constitutes a                     
          reversible error.                                                           

               To the extent the examiner might have considered the                   
          preambular limitation "a donor roll" (see Answer, page 8), the              
          examiner's consideration is deemed inadequate.  The examiner                
          simply failed to proffer any explanation or evidence as to why              
          one of ordinary skill in the art would have been led to apply               
          a method for making a printed circuit board, a photoreceptor                
          or a photolithography for the purposes of making "a donor                   
          roll".  On this record, we are constrained to reverse the                   
          rejection of claims 1 through 24.                                           
               The decision of the examiner is reversed.                              


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