Appeal No. 1997-0587
Application 08/314,644
differences. The answer to this question can be found in
appellants’ disclosure. The examiner’s question is related to
the breadth of the claim rather than to its indefiniteness.
Breadth of the claims is not equated with indefiniteness of
the claims. In re Miller, 441 F.2d 689, 693, 169 USPQ 597,
600 (CCPA 1971).
We are of the view that the scope of the claims in
this application would be understood by the artisan when
interpreted in light of the accompanying disclosure.
Therefore, we do not sustain this rejection of claims 1-8, 10-
17, 19 and 20.
We now consider the rejection of the appealed claims
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007