Appeal No. 95-1827
Application 07/816,157
of the apparatus and therefore “claims 23-24 recite structure
which is either readable on the reference or an obvious
modification thereover” (answer, page 5). The examiner cites
In re Rishoi, supra, for the holding that “there is no
patentable combination between a device and the material upon
which it works” (Paper No. 13, page 2). The examiner has
determined that the “material being claimed as a necessary
element of the apparatus combination [the electrically
conductive medium] is considered to be the material being
worked upon by the structural elements of the claimed
apparatus.” (Paper No. 13, sentence bridging pages 2-3).
Appellant does not contest that the recitations of “inner
cavity” and “means for applying an electric field” are shown
by Stillman but argues that the claims are distinguished over
the applied prior art by the chemical composition features
(brief, pages 7 and 11).
Accordingly, the dispositive issue here is one of claim
interpretation, i.e., we must review the examiner’s rejection
analysis to determine if the claim has been correctly
construed as to the scope and meaning of each contested
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