Appeal No. 1998-0180
Application No. 08/471,309
do not agree that a case for anticipation has been established. Accordingly, we cannot sustain the
rejection under 35 U.S.C. § 102.
In a matter relevant to the instant rejection and to the other standing rejections, the examiner
appears to reinterpret the claims ex post facto, on page 8 of the Answer, by interpreting “dispersion”
differently. However, as appellant responds on pages 18 through 20 of the Reply Brief, the
specification clearly delineates the meaning that appellant attaches to the term, and we interpret
“dispersion” accordingly. Appellant has met the requirements for interpretation of the term limited to
the meaning urged. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994)(repeating the principle that where an inventor chooses to be his own lexicographer and gives
terms uncommon meanings, he must set out the uncommon definition in the patent disclosure). See also
Beachcombers Int’l, Inc. v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1158, 31 USPQ2d
1653, 1656 (Fed. Cir. 1994)("As we have repeatedly said, a patentee can be his own lexicographer
provided the patentee's definition, to the extent it differs from the conventional definition, is clearly set
forth in the specification.")
The Section 103 rejection over Liu
The examiner bears the initial burden of presenting a prima facie case of unpatentability. If that
burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After
evidence or argument is submitted by the applicant in response, patentability is determined on the
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