Appeal No. 96-0640
Application 08/127,178
(CCPA 1974); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). In our view, the examiner should have
determined the scope of the subject matter claimed before he
determined the field of invention and compared the pertinent
prior art therein to the subject matter appellant’s claims.
For example, the examiner should have first determined (1) the
effect of the functional language, (2) the broadest reasonable
interpretation to be accorded the terms “coating” and
“adhesive matrix” consistent with the description of the
invention in the specification (see In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)), and (3) the full
scope of the term “dense granular weighting material” before
considering the novelty, obviousness, and/or enablement of the
claimed subject matter. Our remarks here are elicited by
prior art cited and summarized in herein newly cited Lilley et
al., U.S. 5,278,219, patented January 11, 1994 (prior art
under 102(e) based on a filing date of June 25,
1992)(attached).
Conclusion
We reverse the examiner’s rejection of Claims 1-10 under
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