Ex parte EDWARDS et al. - Page 7




                 Appeal No. 98-1922                                                                                       Page 7                        
                 Application No. 08/253,721                                                                                                             


                 uppermost surface of the slide ; and (3) submitting that the3                                                                                
                 claim is met by Maeda's slide since it is capable of                                                                                   
                 performing the function, that is the claimed contact surface                                                                           
                 is readable on Maeda's raised rim.   We agree.  In that      4                                                                         
                 regard, the slider device 3 of Maeda is fully capable of                                                                               
                 receiving an object which overlies the raised rim 6.  As such,                                                                         
                 it is our determination that the claimed contact surface being                                                                         
                 the uppermost surface of the slide reads on  the raised rim 6.               5                                                         




                          Since all the limitations of claim 16 are found in Maeda,                                                                     
                 the decision of the examiner to reject claim 16 under 35                                                                               
                 U.S.C.                                                                                                                                 
                 § 102(b) is affirmed.                                                                                                                  



                          3The specie depicted in the appellants Figures 14 and 17                                                                      
                 is recited in dependent claim 12.                                                                                                      
                          4The appellants did not reply to the examiner's response                                                                      
                 to the appellants' argument.                                                                                                           
                          5As set forth by the court in Kalman, it is only                                                                              
                 necessary for the claims to "'read on' something disclosed in                                                                          
                 the reference, i.e., all limitations of the claim are found in                                                                         
                 the reference, or 'fully met' by it."                                                                                                  







Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007