Appeal No. 1998-2826
Application No. 08/598,687
provided on the measuring device. The court clearly rejected
the examiner’s approach. As stated by the court in Miller,
418 F.2d at 1396, 164 USPQ at 49, "[t]he fact that printed
matter by itself is not patentable subject matter, because
non-statutory, is no reason for ignoring it when the claim is
directed to a combination.” We believe the same rationale
applies in this case, that is, the recitation of a “nail
shell” in claim 3 cannot be ignored in the appealed claims
simply because the examiner considers a “nail shell”, per se,
to be non-statutory subject matter.
Since all the limitations of appellant’s claim 3 are not
found in the applied prior art or obvious therefrom, it
follows that the examiner's rejection of claim 3 under 35
U.S.C. § 103 will not be sustained.
Claims 4 through 6 are dependent on claim 3 and contain
all of the limitations of that claim. Therefore, we will also
not sustain the standing 35 U.S.C. § 103 rejection of claims 4
through 6.
CONCLUSION
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