Appeal No. 1997-4234 Application No. 08/423,211 § 112, first paragraph, as lacking support in the specification for terminology present in the claims was affirmed, but the rejection of the claims under 35 U.S.C. § 103 was reversed, holding that "[e]ven though the above quoted expressions are held by us to introduce new matter into the claims, nevertheless, they cannot be ignored, but rather, must be considered and given weight when evaluating the claims so limited with regard to obviousness over art." Citing: In re Miller, 441 F.2d 689, 694 , 169 USPQ 597, 600 (CCPA 1971)("All words in a claim must be considered in judging the patentability of that claim against the prior art"). See also: In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). Thus, in reconsidering the patentability of the claims in this application, it is appropriate for the examiner to consider all of the claim terminology in ascertaining what is being claimed prior to attempting to compare the claimed subject matter with the relevant prior art. SUMMARY To summarize, we enter a new ground of rejection under the provisions of 37 CFR § 1.196(b) of claims 1-27 and 29, we affirm the rejection of claim 30 under 35 U.S.C. § 102(e) and vacate the rejection of claims 1, 16, and 27 under 35 U.S.C. § 102(e), the rejections of claims 1-27 and 29 under 35 U.S.C. § 112 first paragraph and second paragraph and the prior art rejection of claims 2-15, 17-26, and 29 under 35 U.S.C. § 103. TIME PERIOD FOR RESPONSE 13Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007