Appeal No. 1996-3974
Serial No. 08/198,808
Page 3
Claims 19-23 and 25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Hobbs. Alternatively, claims 19-23 and 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hobbs.
Rather than reiterate the arguments of the appellant and the examiner, reference is made
to the Appeal Brief and the Examiner’s Answer, where appropriate, for the respective details
thereof.
OPINION
As a preliminary matter, claims 20-23 and 25 are dependent upon independent claim
19. The appellant states that the claims should be considered as a single grouping and that they
stand or fall together. [See Appeal Brief, page 5.] We concur with appellant’s position.
Accordingly, with respect to patentability, all of the claims stand or fall together. [See 37
C.F.R. § 1.192(c)(5) and M.P.E.P. § 1206.]
We have carefully reviewed the positions of the appellant and the examiner, and have
conducted a thorough study of the reference relied on by the examiner in formulating the
rejections. As a result of this review, we reverse the rejections of claims 19-23 and 25.
Independent claim 19 is rejected under 35 U.S.C. § 102 (b) as being anticipated by
Hobbs. Anticipation analysis is a two-step process. In the first step, the claim must be properly
construed. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1574, 36 USPQ2d 1417, 1419
(Fed. Cir. 1995). In this case that means that claim 19 must be given its broadest reasonable
interpretation. See, e.g., In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed.
Cir. 1995). Thus, a determination must be made whether the interpretation of the disputed
claim language is “reasonable.” In re Morris, 127 F.3d 1048, 1055, 44 USPQ2d 1023, 1028-
29 (Fed. Cir. 1997). In the second step, a determination must be made whether all of the
elements of the claim, as properly construed, are disclosed in the prior art reference.
In the present instance, the examiner’s determination of anticipation fails both steps in
the anticipation analysis.
Method claim 19 comprises an introduction and six distinct steps (a) through (f). The
examiner states that the recitation of the use of the “nodal model” should be construed as the
equivalent of mental steps and should not be given “probative value over and above a mental
step.” In essence, the examiner construes claim 19 as merely the “making a selection of fiber,
matrix and interphase and the formation of a composite.” [See Examiner’s Answer, page 3.]
In construing claim 19 as stated above, the examiner has totally disregarded method
steps (a) through (e). These steps actually contain the detailed provisions of the computer-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007