Appeal No. 95-5032
Application 08/189,276
18-22 when they are given the interpretation mandated by the last paragraph of 35 U.S.C. § 112. As
noted above, the examiner has not addressed this question at all. For reasons we have discussed
above, the issue of claim interpretation under 35 U.S.C. § 112 has been properly raised by appellants
but has not been considered by the examiner on this record. The examiner is required to make factual
showings in response to properly raised questions as to how the applied prior art teaches the structure
of claimed means or an equivalent thereof. The examiner has made no such factual showings in this
case.
Thus, appellants’ arguments regarding the proper interpretation of the claims stand essentially
unrebutted by the examiner, and we find these unrebutted arguments to be logical, accurate and
persuasive. Therefore, the invention of claims 4-8 and 18-22 should be construed in the manner
argued by appellants. Such claim construction has not been considered by the examiner on this record.
Accordingly, we conclude that the examiner has failed to support his position that the claimed timing
signal generating means would have been obvious to the artisan in view of the applied prior art.
Therefore, we do not sustain the rejection of claims 4-8 and 18-22 as formulated by the examiner.
No other claims are separately argued by appellants. Therefore, in view of our discussion above,
we sustain the rejection of claims 1-3 and 9-17 but we do not sustain the rejection of claims 4-8 and
18-22. Accordingly, the decision of the examiner rejecting claims 1-22 under 35 U.S.C. § 103 is
affirmed-in-part
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