Appeal No. 96-3586
Application No. 08/262,848
would necessarily require speculation with regard to the metes
and bounds of the claimed subject matter. See In re Steele,
305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Nevertheless, in this instance, in an effort to avoid
piecemeal appellate review (see Ex parte Saceman, 27 USPQ2d
1472, 1474 (Bd. Pat. App. & Int. 1993) and Ex parte Ionescu,
222 USPQ 537, 540 (Bd. App. 1984)) we make the following
interpretations of the terminology appearing in independent
claim 14 for the purpose of reaching the rejection based on
prior art. In claim 14, lines 1 and 2, we interpret "a part
such as an automobile part" to be -- a part --.
Turning specifically to the rejection of claim 14 under
35 U.S.C. § 103 based on the teachings of Altman, the
appellant argues that:
The etchant [of Altman] etches through an extremely
thin vapor-deposited aluminum or zinc coating to
produce a specularly reflective mark for projection.
Altman's "alternate embodiment" (Col. 5, line 67 et
seq.) suggests coating the entire surface of the
sheet with "microcapsules which contain an etchant
fluid["] and using the marking pen 96 merely to
rupture the capsules. There is nothing in this
patent which would show a person skilled in the art
how to permanently mark an identifying indicia on a
part such as an automobile part using a marking
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