Appeal No. 95-3678
Application 07/545,786
It is our view, after consideration of the record before
us, that claims 2-4 and 7-9 have been improperly rejected on the
ground of Res Judicata, although claims 10 and 15 are properly
rejected on this ground. We are also of the view that the
collective evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1, 11, 13 and 14. Accordingly, we affirm-in-part.
We consider first the rejection of claims 1, 11, 13 and
14 under 35 U.S.C. § 103 as being unpatentable over the teachings
of Sze in view of Shinoda and Kawashima. As we noted above,
these claims now contain limitations which compelled the Board in
the previous decision to reverse the rejection of these claims
based on Pinkham and Shinoda, and led the Board to make a new
rejection based on Sze and Shinoda. The examiner has applied Sze
and Shinoda in exactly the same manner as the Board did in the
previous decision and has added Kawashima to allegedly meet the
additional recitations of the claims added by amendment after the
previous Board decision. Appellant argues that the claims have
not been properly interpreted under the last paragraph of 35
U.S.C. § 112 as required by the decision in In re Donaldson, 16
F.3d 1189, 29 USPQ2d 1845, and that when interpreted in the
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