Appeal No. 97-2504
Application 08/200,707
As the rejection notes, the examiner is of the view that the
claim may have either of two possible interpretations. We note
that one of the examiner’s interpretations would be contrary to
the disclosed invention and the other interpretation would be
consistent with the claimed invention. In this situation the
only appropriate claim interpretation is the one which is
consistent with the disclosed invention. Since it is clear from
the record as a whole that it is the protective layer only which
defines the recessed index area, we interpret the claim in that
manner. When the claim is interpreted in light of the
specification in this case, we conclude that the claim properly
defines the invention within the meaning of 35 U.S.C. § 112.
Therefore, we do not sustain the rejection of claim 3 under the
second paragraph of 35 U.S.C. § 112.
We now consider the rejections of the claims under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
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