Appeal No. 1998-2066
Application No. 08/315,629
ed., rev. 1, Feb. 2000); In re Mindick, 371 F.2d 892, 894, 152
USPQ 566, 568 (CCPA 1967) and In re Deters, 515 F.2d 1152, 1156,
185 USPQ 644, 648 (CCPA 1975). Were we to grant the appellant’s
request, we would, in effect, be overruling the examiner's
decision to refuse entry of the amendment filed December 5, 1997.
We decline to take such action. Accordingly, the request for a
remand is denied.
In our earlier decision we compared appealed claim 7, which
corresponds to claim 1 of the Muller patent, to the appellant’s
original claims 1 through 5 and determined that the subject
matter of the appellant’s original claims 1 through 5 is directed
to an invention that is not “substantially the same” as the
invention claimed in claim 7. Specifically, we found that none
of the appellant’s original claims 1 through 5 contain any
express language directed to “a circumferential groove having a
first radial depth and a second radial depth extending further
radially inwardly than said first radial depth,” which based on
the file history of the Muller patent we concluded is a material
part of the subject matter of claim 7.
The request alleges (request, p. 9) that “Muller’s claim 1
and appellant’s claim 1 are for substantially the same subject
matter.” In support, the appellant refers to his specification
and drawings and to the language “indentation means being
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007