Appeal No. 1997-1685
Application 08/348,236
description for one of ordinary skill in the art to recognize that the specification, as
originally filed, provides a basis for the concept of “uncoated mica flakes”.
The examiner is not persuaded that the description of Muscovite describes
uncoated mica because Diefenbach identifies Muscovite as a natural mica that provides
interference colors. We are not persuaded by the examiner’s position for the examiner
has not provided any evidence to establish that natural or synthetic mica is coated.
35 U.S.C. § 103
Claims 11-17 and 19-24 are rejected as unpatentable over Yamazaki and
Diefenbach.
Turning first to claims 12-17 and 19-24, the examiner deems the rejections
proper because he gave no weight to the expression “uncoated mica flakes”.
The rejection is not sustainable because the examiner has improperly ignored an express
limitation in these claims. All limitations of a claim must be considered regardless of
whether or not they were supported by the specification as filed. Ex parte Grasselli, 231
USPQ 393, 394 (Bd. Pat. App. 1983), citing In re Wilson, 424 F.2d 1382, 1385, 156
USPQ 494, 496 (CCPA 1970) and In re Miller, 441 F.2d 689, 692, 169 USPQ 597, 599
(CCPA 1971).
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