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.
REVERSED
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