Appeal No. 96-2274
Application No. 08/291,354
1008, 1015, 194 USPQ 187, 193 (CCPA 1977), citing In re Moore,
439 F. 2d 1232, 1235, 169 USPQ 236, 238 (1971). Furthermore,
our reviewing court points out that a claim which is of such
breadth that it reads on subject matter disclosed in the prior
art is rejected under 35 U.S.C. § 102 rather than under 35
U.S.C. § 112, second paragraph. See In re Hyatt, 708 F.2d
712, 715, 218 USPQ
195, 197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904,
909, 164 USPQ 642, 645-46 (CCPA 1970).
Appellants point out on page 17 of the brief that the
Examiner has not offered any salient points or cogent
reasoning for rejecting Appellants' claims under 35 U.S.C. §
112, second paragraph. We also fail to find that the Examiner
has provided any reasons for this rejection. Without the
benefit of the Examiner's specific reasoning, we find that the
claims set out and circumscribe the invention with a
reasonable degree of precision and particularity in light of
teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art. Therefore, we will not
sustain the Examiner's rejection under 35 U.S.C. § 112, second
paragraph.
12
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007