Appeal No. 95-2440
Application 07/705,726
the examiner's remark is essentially unreviewable in any
meaningful manner.
Upon return of this application, the examiner is to
reconsider the entire merits of the rejection consistent with
In re Collier, supra, In re Johnson, supra, In re Roberts,
supra and In re Rainer, supra. If the examiner remains of the
view that claims 46 through 50, 52, 57 through 61, 63 and 72
through 98 are still unpatentable under 35 U.S.C. § 112,
second paragraph, the examiner should institute such a
rejection. The examiner needs to provide a complete analysis,
including statements and/or objective evidence as to why
certain fabrication steps are essential.
The examiner has also rejected claims 72 through 76 and
84 under 35 U.S.C. § 112, second paragraph, as being
indefinite. The examiner took the position that the terms
"repeatedly" and "substantially plane" recited therein render
the claims "vague and indefinite." Under the second paragraph
of § 112, words used in claims must not be analyzed in vacuum.
Rather, they must be read in light of the teachings of the
prior art and the application disclosure. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). However, the
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