Appeal No. 96-1659
Application 08/166,931
We are not aware of any per se rule as proposed by the
examiner that use of the term “characterized” in a claim
automatically renders the claim indefinite. The examiner
seems to suggest that the word “comprising” must be used
instead of
the word “characterized.” The examiner has not presented any
rationale as to why appellant’s selection of the word
“characterized” renders the claimed invention indefinite. We
agree with appellant that the artisan having considered the
specification of this application would have no difficulty
ascertaining the scope of the invention recited in claims 35-
49, 53 and 55-68. Therefore, the rejection of these claims
under
the second paragraph of 35 U.S.C. § 112 is not sustained.
We now consider the rejection of claims 35-68 under
35 U.S.C. § 103 as unpatentable over various combinations of
Ferguson, Watkins, Iwata and Kabat. As a general proposition
in an appeal involving a rejection under 35 U.S.C. § 103, an
examiner is under a burden to make out a prima facie case of
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007