Appeal No. 95-2221
Application No. 07/994,072
"all words in a claim must be considered in judging the
patentability of that claim against the prior art" [emphasis
added]. Further, as stated by the Board in Ex parte
Grasselli, 231 USPQ 393, 394 (Bd. of App. 1983), aff'd mem.,
738 F.2d 453 (Fed. Cir. 1984),
We also note that many of the remaining
references required the presence of other elements
expressly excluded from the present claims, i.e.,
halogen, uranium or the co-presence of the vanadium
an phosphorus. All of these limitations of the
claims must be considered regardless of whether or
not they were supported by the specification as
filed [emphasis added].
Since it is apparent that the examiner has not given
consideration to the negative limitation set forth in the
appealed claims, we are constrained to reverse prior art
rejections (2), (3), (4), (5), and (6).
Rejections (7), (8), (9) and (10) stand on a different
footing. Here, in his statement of the rejections of the
appealed claims, the examiner has apparently considered the
negative limitation that solidification in appellants' process
occurs "without molding under pressure, heat setting or
calendaring." Thus, the examiner states in the Answer at
pages 12 and 13 that:
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