Appeal No. 96-0640
Application 08/127,178
Metzger’s teaching as a whole would have led persons having
ordinary skill in the art away from making and using
soundproofing coatings which are filled with large amounts of
powdered lead or aluminum dispersed in an adhesive binder
which is most desirably filled to at least twice its volume
with hollow microspheres. References are to be considered for
everything they fairly suggest to a person having ordinary
skill in the art. In re Burckel, 592 F.2d 1175, 1179, 201
USPQ 67, 70 (CCPA 1979); In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976). Accordingly, we reverse the
examiner’s rejection of Claims 1-10 under 35 U.S.C. § 103.
Other Issues
We remand this case to the examiner with our
recommendation that he determine the scope of the subject
matter claimed before proceeding to determine the
patentability of the claimed subject matter under 35 U.S.C. §
103. Before considering issues of patentability under
sections 102, 103, and 112, first paragraph, one must first
determine the full scope of the subject matter claimed. See
In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970); In re Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789, 791
- 10 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007