Appeal No. 1998-0724
Application No. 08/231,287
Moreover, we disagree with the examiner’s argument that the invention must “clearly
distinguish” over the prior art of record. All that is required is that the prior art does not
anticipate or render obvious the claimed invention as delimited by the language of the
claim and as properly interpreted in light of the disclosure. This interpretation does not
include all interpretations, but only those that are reasonable interpretations in light of the
relevant disclosure and any applicable file wrapper estoppel. Here, the examiner has
merely set forth that the language of the claims is broad and therefore, his interpretation
thereof is similarly broad and a wider range of prior art teachings are applicable to the
claimed invention. Still, the examiner does not address the specific language of the claims
and only discusses general concepts rather the metes and bounds of the claimed
invention.
As discussed above, we find that the examiner has not set forth a prima facie case
of obviousness, and we will not sustain the rejection of independent claims 1, 8 and 11
based on Walsh and DiLascia.
Since Lefor does not remedy the deficiency in the combination of Walsh and
DiLascia, we will not sustain the rejection of independent claims 2, 4 and 12 and
dependent claim 3 based on Walsh, DiLascia and Lefor.
CONCLUSION
8
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