Appeal No. 1997-0367 Application No. 08/321,581 of the vibrating member and the driving and halting waves, set forth in “wherein” clauses in independent claims 4 and 22, is not disclosed in either of Ueda or Miyazawa. We note that the Examiner, in choosing to ignore these stated limitations, states in the penultimate sentence at page 4 of the Answer: Since the claims are not phrased in a means-plus function foremat [sic], the “wherein” clauses are not seen as structurally limiting. The Examiner, however, has not provided any legal basis as support for this contention. To the contrary, our reviewing courts have held that, in assessing patentability of a claimed invention, all the claim limitations must be suggested or taught by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). All words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1282, 1385, 165 USPQ 494, 496 (CCPA 1970). In view of the above discussion, we cannot sustain the Examiner’s 35 U.S.C. § 102(a) rejection of independent claims 4 and 22, nor of claims 5, 6, 16-21, and 23-30 dependent thereon. 7Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007