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.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007