Appeal No. 96-1651
Application 07/987,186
can be found in the main, reply, and supplemental reply briefs
(Paper Nos. 18, 21, and 25).4
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied teachings, 5 6
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we make the determinations
which follow.
4The issue regarding withdrawn claims 14 through 16, and 19
(main brief, pages 5 and 6) is appropriately resolved by way of
petition, not appeal.
5The claims on appeal, drawn to a ceramic-metal composite
rotor, are claims of elected Group II (Paper No. 4), pursuant to
a restriction requirement (Paper No. 3). These claims have also
been indicated to be for the elected species of Figures 1A and 1B
(Paper No. 7), in accordance with an election of species
requirement (Paper No. 6).
6In our evaluation of the applied teachings, we have
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
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