Appeal No. 1998-1319
Application No. 08/466,188
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of all
claims over APA, Arai, and Suzuki, affirm the obviousness
rejection of claims 18, 19, 23, 30, and 32 over Aoki, but
reverse the obviousness rejection of claims 9, 10, 15, 20
through 22, 24 through 29, 31, and 33 through 44 over Aoki,
and affirm the obviousness-type double patenting rejection of
claims 18 through 27, but reverse the obviousness-type double
patenting rejection of claims 9, 10, 15, and 28 through 44.
As a preliminary matter we note that the examiner has
failed to differentiate the variations among the claims. The
scope of the claims requires interpretation. "'[T]he main
purpose of the examination, to which every application is
subjected, is to try to make sure that what each claim defines
is patentable. [T]he name of the game is the claim.'" In re
Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed.
Cir. 1998) (quoting Giles S. Rich, The Extent of the
Protection and Interpretation of Claims --American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497,
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