Appeal No. 1996-3860
Application 08/312,819
claimed invention and the reference disclosure.1
The examiner has not addressed each of the differences with respect to Sauter. This is error.
In order to have a viable 35 U.S.C. ' 102 rejection, “[t]here must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of ordinary skill in
the art in the field of the invention.” Scripps Clinic & Research Found. V. Genentech, Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). Claim limitations cannot
be ignored, but rather every limitation must be given effect. In re Angstadt, 537 F.2d 498,
501, 190 USPQ 214, 217 (CCPA 1976) and In re Wilder, 429 F2d 447, 450, 166 USPQ
545, 548 (CCPA 1970).
Here in view of the detailed arguments presented by appellants as to the
1. With respect to claim 9, appellants urge that Sauter does not disclose a caplet with hard-shell gelatin
capsule halves. In addition, appellants urge that Sauter does not (a) provide a first and second holding
means for the caplet (b) insert the first end of the caplet into the first caplet holding means while leaving the
second end exposed; (c) place a hard-shell gelatin capsule half on the second exposed end of the caplet
(d) dip the hard-shell capsule covered second exposed end of the caplet into a hot water bath to plasticize
the hard-shell half; (e) permit the plasticized hard-shell capsule to dry to form a shrink-wrapped hard-shell
covered second end; (f) displace the caplet from the first holding means; (g) insert the hard-shell capsule
covered second end of the caplet into the second caplet holding means while leaving the first end of the
caplet exposed (h) place a hard-shell gelatin capsule half on the first exposed end of the caplet; (i) dip the
hard-shell capsule covered first exposed end of the caplet into a hot water bath to plasticize the hard-shell
capsule half (j) permit the plasticized hard-shell capsule half to dry to form a shrink-wrapped hard-shell
covered first end and (k) displace the caplet from the second holding means. And with respect to claim 13,
appellants urge that Sauter does not place first and second hard-shell gelatin capsule halves on first and
second ends of a caplet, and does not plasticize the hard-shell gelatin capsule halves by exposing the
halves to moisture. See appellant’s brief, pages 10-11.
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