Appeal No. 2000-0290 Page 5
Application No. 08/670,805
"is clearly erroneous" in that these article limitations more
particularly describe the material that is being worked on by
the claimed method steps. The appellants then requested the
examiner to provide case law permitting the particular
material used in a process claim to be ignored. The examiner
in the answer maintained the rejection and did not cite any
case law in support of her position.
Under 35 U.S.C. § 103 all words in a claim must be
considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ
494, 496 (CCPA 1970). Furthermore, it is well established
that the materials on which a process is carried out must be
accorded weight in determining the obviousness of that
process. See In re Pleuddemann, 910 F.2d 823, 825-28, 15
USPQ2d 1738, 1740-42 (Fed. Cir. 1990); In re Kuehl, 475 F.2d
658, 664-65, 177 USPQ 250, 255 (CCPA 1973); Ex parte Leonard,
187 USPQ 122, 124 (Bd. App. 1974).
In our view, the case law clearly establishes that the
position of the examiner in this case is in error. That is,
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