Appeal No. 1998-2945 Page 8
Application No. 08/624,734
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). Furthermore, it is our opinion
that one of ordinary skill in the art would not have
considered the cylinder assembly of Taylor (i.e., damper 10)
or the cylinder assembly of Isham (i.e., section B) to be a
"piston." It follows that we cannot sustain the examiner's
rejections of claims 1 and 7 and claims 4 through 6 and 12
through 15 dependent thereon.
REMAND
We remand the application to the examiner to consider
whether or not the following two errors render independent
claims 1 and 7, and dependent claim 2, indefinite under the
second paragraph of 35 U.S.C. § 112.2
2Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
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