Ex parte MOTTI et al. - Page 7




          Appeal No. 1997-1479                                                        
          Application No. 08/418,579                                                  


               We remand this application to the examiner to address the              
          following matters.                                                          


               1. Considering 35 U.S.C. § 112, first and second                       
          paragraphs, the examiner should ascertain and specify what                  
          structure of the disclosed automatic defibrillator simulator                
          and method corresponds to each claim limitation, e.g., what is              
          the means for enabling an instructor to provide a different                 
          alternative sequence?  There is no express antecedent basis                 
          for “said sequence” (claims 15 and 16, line 9).                             


               2. Considering the acknowledged prior art specified on                 
          page 2 of appellants’ specification (for example, U.S. Patent               
          No. 5,137,458) which reflects the knowledge, prior to                       
          appellants’ invention, of a defibrillation training system                  
          (simulator) wherein a pulse is discharged within a                          
          defibrillator/monitor rather than being actually applied to a               
          manikin, and the interactive trainer/prompter device of the                 
          reasonably pertinent Parker patent of record, recognized                    
          (column 2, lines 59 through 64) for employment in training or               
          prompting of skills, other than CPR, which might be critical,               
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