Appeal No. 97-1156
Application 08/192,270
appellants’ specification and claims , the applied teachings , 4 5
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we make the determinations
which follow.
The indefiniteness issue
We reverse the examiner’s rejection of claims 30 through
48 under 35 U.S.C. 112, second paragraph, as being indefinite.
The examiner is uncertain as to whether a product per se
or a process of making a product is being claimed, and
specifically points to clauses (D) and (E) of claim 31, as
well as claims 40 and 41 (Paper No. 20, page 4).
4The claims on appeal, drawn to a ceramic-metal composite assembly, are
claims of Group I, consistent with a restriction requirement in parent
application Serial No. 07/987,186. These claims have also been indicated to be
for the elected species of Figures 1A and 1B (Paper No. 5), in accordance with
an election of species requirement (Paper No. 4).
5In 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).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007