Appeal No. 95-2710
Application 08/011,837
and 58-61 under 35 U.S.C. § 101 as lacking patentable utility;
claims 52, 54, 55 and 58-62 under 35 U.S.C. § 112, first
paragraph, on the ground that the specification is
speculative; claims 52, 54, 55 and 58-61 under 35 U.S.C.3
§ 102(b) as being anticipated by appellants’ admitted prior
art or Isojima.4
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded. We therefore do not sustain these rejections.
Rejection under 35 U.S.C. § 101
Before utility is determined, the claims must be
interpreted to define the invention to be tested for utility.
See Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ
592, 596 (Fed. Cir. 1983), cert denied, 469 U.S. 835 (1984).
3We assume that the examiner’s statement that the
specification is speculative means that the examiner considers
the specification to fail to provide an enabling disclosure.
4In the answer (pages 4-5), the examiner erroneously
includes canceled claim 51 in the rejections under 35 U.S.C.
§§ 101 and 102(b).
-4-4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007