Appeal No. 96-0676
Application 07/963,165
Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA
1970).
The examiner questions the meaning of “disturbance”
(answer, page 6). As indicated above, the examiner’s initial
burden is to explain why this term causes appellants’ claims,
when interpreted
by one of ordinary skill in the art in light of appellants’
specification and the prior art, to fail to set out and
circumscribe a particular area with a reasonable degree
of precision and particularity. Merely questioning the
meaning of the term is not sufficient for carrying this
burden.
For the above reasons, the rejection under 35 U.S.C.
§ 112, second paragraph, is reversed.
Rejection under 35 U.S.C. § 103
Huebner’s compounds differ from those of appellants in
that Huebner’s compounds have a benzofuryl group, wherein the
oxygen atom is in a five-membered ring (abstract), whereas in
appellants’ chromans, the oxygen atom is in a six-membered
ring.
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