Appeal No. 1999-0391
Application 08/225,229
appellant’s specification and claims, the applied prior art, and the respective viewpoints of
appellant and the examiner. As a consequence of our review, we are in general agreement with the
examiner’s statement of the rejection (Answer, pages 3 to 5), stating that claims 1 and 6 on appeal
would have been anticipated by Ditto, and stating that claims 22 and 26 on appeal would have been
obvious to one of ordinary skill in the art at the time the invention was made in light of the collective
teachings of Runge and Von Kohorn. For the reasons generally set forth by the examiner (Answer,
pages 5 to 9), and for the reasons which follow, we will sustain the rejections of claims 1, 6, 22, and 26
under 35 U.S.C. §§ 102(b) and 103.
Rejection of Claims 1 and 6 Under 35 U.S.C. § 102(b) Over Ditto:
Appellant argues that Ditto teaches a coaster which "has nothing to do with a beverage vessel"
(Brief, page 4), and that therefore "it is impossible that the Figure 6 embodiment of Ditto show a
beverage vessel as claimed in claim 1" (Brief, page 4).
At the outset, we note that a claim preamble has the import that the claim as a whole suggests
for it. Where the claim preamble is used to recite structural limitations of the claimed invention, the
PTO and courts give effect to that usage. Conversely, where a structurally complete invention in the
claim body is defined and uses the preamble only to state a purpose or intended use for the invention,
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007