Appeal No. 2001-0291 Page 13
Application No. 08/772,559
given appellants’ definition of “substantially” as “within 20
percent” on page 20 of the specification. Moreover, it
appears that several other parameters of appellants' admitted
prior art barrier fall within the ranges of the parameters
recited in the dependent claims.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-17 under 35 U.S.C. § 112, second paragraph, and under
35 U.S.C. §§ 102 and 103 is reversed. A new rejection of
claims 1-17 under the second paragraph of 35 U.S.C. § 112 is
entered pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, "A new
ground of rejection shall not be considered final for purposes
of judicial review."
37 CFR § 1.196(b) also provides that appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007