Appeal No. 2000-2175 Page 11
Application No. 09/268,925
In view of the determinations made above that the words
"HVAC plastic duct connector" as recited in claims 1 and 7 do
give "life and meaning" and provide further positive
limitations to the invention claimed, we conclude that the hose
jacket of Meyer does not anticipate the subject matter of
claims 1 and 7. Accordingly, the decision of the examiner to
reject independent claims 1 and 7, and claims 2, 3, 5, 6, 8 and
9 dependent thereon, based on Meyer is reversed.
The rejection based on Botsolas
We will not sustain the rejection of claims 11-14 under
35 U.S.C. § 103(a) as being unpatentable over Botsolas.
The record is clear that the examiner has given little or
no patentable weight to the "providing" step of claim 11 or the
"connecting" steps of claim 11 (see answer, p. 5). This is
clearly in error. 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
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