Appeal No. 1999-0098
Application No. 08/328,443
On page 7 of the supplemental answer, the examiner argues
that
The structural difference between the
applicant’s disclosed device and the reference
is a fuzzy, fuzzy line (particularly when all of
the applicant’s embodiments are considered).
"Integral" does not to [sic] clear this line.
The artisan would be unable to ascertain the
scope of the rejected claims if they are found
to be allowable over Tanguy.
These arguments are not considered relevant to the question of
anticipation under § 102(b), since the issue is whether the
claims are readable on the reference, rather than how
appellant’s disclosure differs from the reference. Whether
the artisan could determine the scope of the claims concerns
the question of compliance with the second paragraph of § 112,
under which the claims have not been rejected.
Accordingly, we will not sustain the rejection of claims
1, 11 and 42, nor their dependent claims 5, 44 and 45, under §
102(b). The rejection of dependent claims 4, 6 and 14 under §
103 also will not be sustained, since, even considering Kranz,
we find no evidence that it would have been obvious to
integrally attach the guide member 15 of Tanguy to nail 1.
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