Appeal No. 1996-2163
Application 08/106,541
at the outer edge of the flare. A simple flaring surface does not necessarily flare
backwards or roll backwards.
With this understanding, we reverse the rejection of independent claims 17 and 20
and their respective dependent claims rejected under 35 USC § 102 over Ishii. On the
other hand, we sustain the rejection of anticipation under 35 USC § 102 of claims 27-29 on
the basis of this reference.
This rejection under 35 USC § 102 of independent method claim 27 is sustained
because there is no recitation in this claim that the recited “serrated-rolled edge” must be
rolled back, which feature is recited in independent claims 17 and 20 and is the basis for
the reversal of the rejection of these respective claims. Ishii does not show and the
translation we have obtained of Ishii does not describe that the edge portion of the horn
pipe 3 in the various figures has edges that are rolled back as required by independent
claims 17 and 20 on appeal. To sustain the examiner’s rejection of these claims, we
would need to resort to speculation or unfounded assumptions to supply the factual
deficiencies in the record before us. This we decline to do. Note the guidance provided
by In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000 (1968). Ishii simply falls short of the
needed specificity.
Appellant’s arguments addressing this rejection are at pages 5 and 6 of the
principal Brief on appeal and at pages 3 and 4 of the second Reply Brief (where
appellant’s first Reply Brief does not substantively address these rejections). To the extent
that appellant argues that Ishii does not teach the reduction of edge defraction, this feature
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007