Ex parte MATTHEW A. HOWARD et al. - Page 6




          Appeal No. 96-0022                                                          
          Application 08/096,214                                                      

          approach the area circumscribed by claim 43.  We will not sustain           
          the examiner's rejection of claim 43 under 35 U.S.C.  112,                 
          second paragraph.                                                           
                    Turning now to the examiner's anticipation rejection of           
          claim 39,we find that Diefenbach discloses a magnetic key case              
          which includes a magnet 15 attached to a container 7 with a                 
          sliding cover 11.  The container holds a key 8.  The examiner               
          considers the magnet 15 to be a "magnetic means for inserting in            
          a body part", the sliding cover 11 to be a "carrier means for               
          carrying a treatment to a specific location in the body part" and           
          the container 7 to be a "connection means for releasably                    
          connecting the carrier means to the magnetic means."                        
                    The examiner argues that the language "drug delivering            
          apparatus" is a statement of intended use and that the case 11              
          disclosed in Diefenbach is capable of carrying a treatment (See             
          Examiner's Answer at page 4).  The examiner also argues that a              
          body can include a myriad of possibilities such as a car (Final             
          Rejection at page 5).  However, we, as well as the examiner, are            
          charged with interpreting the recitations in claim 39 consistent            
          with the specification which is clearly directed to a drug                  
          delivering apparatus for carrying treatment to a specific                   
          location in the body of an animal such as a human being.  As                


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