Appeal No. 95-1827
Application 07/816,157
regards as his invention (answer, page 3). Claims 29-31 and
34 stand rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit
the subject matter of a previous claim (id.). Claims 23, 24,
32 and 33 stand rejected under 35 U.S.C. §§ 102(a) and (b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103
as unpatentable over Stillman. We reverse all of the
examiner’s rejections for reasons which follow.
OPINION
A. The Rejections Under 35 U.S.C. § 112
The claims must be analyzed first in order to determine
exactly what subject matter they encompass. In re Angstadt,
537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976), quoting from
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
The examiner has rejected appealed claims 23 and 24 under
the second paragraph of § 112 because “[t]he claims improperly
recite the material contained within the apparatus as an
element of structure.” (answer, page 3, referring to Paper No.
13, page 3, dated Feb. 8, 1994). The examiner concludes that
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007