Appeal No. 1997-3096
Application 08/391,407
The examiner has advanced the following grounds of rejection on appeal:
claims 16 through 19 and 31 through 33 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Nakamura;
claims 16 through 19 and 31 through 33 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Adur ‘968;
claims 16, 19, 31 and 33 stand rejected under 35 U.S.C. § 102(b) as anticipated by any of
Komatsu ‘651, Komatsu ‘796, Sezaki, Kosaka, Baxmann, Abe, Kawai, or Ito;
claims 16, 19 and 31 through 33 stand rejected under 35 U.S.C. § 102(e) as anticipated by either
Adur ‘127 or Komatsu ‘683; and
claims 34 and 35 stand rejected under 35 U.S.C. § 103 as being unpatentable over any of
Nakamura, Adur ‘968, Komatsu ‘651, Komatsu ‘796, Sezaki, Kosaka, Baxmann, Abe, Kawai,
Ito, Adur ‘127 or Komatsu ‘683 in view of appellants’ discussion of the prior art at page one,
second paragraph, of the specification.4
We affirm the ground of rejection § 102(b) over Nakamura with respect to claims 16
through 19, 31 and 33 and the ground of rejection of claims 34 and 35 under § 103, and reverse
all other grounds of rejection under § 102(b) and § 102(e). We also remand this application to
the examiner for consideration of other issues with respect to the appealed claims as set forth
below (see below p. 18).
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and supplemental answer and to appellants’ brief and reply
brief for a complete exposition thereof.
Opinion
It is well settled that in order to properly compare the claimed invention encompassed by
the appealed claims with the prior art applied by the examiner, we must first interpret the claim
language, and in doing so, give the terms the broadest reasonable interpretation consistent with
the written description in appellants’ specification as it would be interpreted by one of ordinary
skill in this art. See generally, In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997); Gechter v. Davidson, 1165 F.3d 1454, 1457, 43 USPQ2d 1029, 1032 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); In re Zletz,
4 The examiner has withdrawn the ground of rejection 35 U.S.C. § 112, second paragraph
(answer, page 2).
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