Ex parte DAWLEY et al. - Page 4




          Appeal No. 1999-0231                                                        
          Application No. 08/472,354                                                  


          appellants’ arguments can be found in the main brief and the                
          reply brief (Paper Nos. 24 and 26 respectively).                            
                                      OPINION                                         
               In reaching our decision in this appeal, we have given                 
          careful consideration to the appellants’ specification and                  
          claims, to the applied prior art references, and to the                     
          respective positions articulated by the appellants and the                  
          examiner.  As a consequence of our review, we make the                      
          determinations which follow.                                                


               Upon evaluation of all the evidence before us, it is our               
          conclusion that the evidence adduced by the examiner is                     
          insufficient to establish a prima facie case of obviousness                 
          with respect to the claims under appeal.  Accordingly, we will              
          not sustain the examiner's rejections of claims 1 through 3                 
          and 5 through 7 under 35 U.S.C.  103.                                      
               Before addressing the examiner's rejections based upon                 
          prior art, it is an essential prerequisite that the claimed                 
          subject matter be fully understood.  Analysis of whether a                  
          claim is patentable over the prior art under 35 U.S.C.  102               
          and 103 begins with a determination of the scope of the claim.              
                                          4                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007