Appeal No. 1997-3974
Application No. 08/541,254
claimed invention because the examiner believed that this
claim limitation was not adequately disclosed.
It was error for the examiner to ignore limitations in
the claims. Regardless of whether the specification was
sufficient to support the subject matter of the claims, claims
must be considered in their entirety when making rejections
based on the prior art. It is never appropriate to simply
ignore limitations of a claim when making a prior art
rejection.
Since the examiner never considered the invention as
set forth in the claims, the examiner has failed to establish
a prima facie case of obviousness. Accordingly, we are
compelled to reverse the rejection of the claims under 35
U.S.C. § 103 based on the fact that the examiner has failed to
meet his burden of establishing a prima facie case of
obviousness.
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007