Appeal No. 1998-0419
Application No. 08/526,534
The examiner relies on the following prior art reference as
evidence of unpatentability:
Song et al. 5,486,366 Jan. 23, 1996
(Song) (filed Oct. 14, 1993)
Claims 1 through 13, 16, and 18-20 on appeal stand rejected
under 35 U.S.C. § 102(e) as anticipated by Song. (Examiner's
answer, pages 4-5.) Separately, claims 14, 15, and 17 on appeal
stand rejected under 35 U.S.C. § 103 as unpatentable over Song.
(Examiner’s answer, pages 5-6.)2
We cannot uphold the 35 U.S.C. § 102(e) rejection of claims
1 through 4, 6 through 10, 12, 13, 16, 19, and 20 as anticipated
by Song and the 35 U.S.C. § 103 rejection of claims 14, 15, and
17 as unpatentable over Song. We affirm, however, the rejection
under 35 U.S.C. § 102(e) of product-by-process claims 5, 11, and
18 as anticipated by Song.
We start with the claim language. Gechter v. Davidson, 116
F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed.
Cir. 1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,
1674 (Fed. Cir. 1994). It is true that in proceedings before
2 The provisional rejection under the judicially created
doctrine of obviousness-type double patenting rejection of
claims 1, 5, 19, and 20 as unpatentable over claims 1, 5, 6, 10,
11, and 13 of copending application 08/527,018 (final Office
action, paper 8, pp. 2-3) has been withdrawn. (Advisory action
of June 13, 1997, paper 12.)
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