Appeal No. 1998-0553
Application 08/405,372
27-40 under the second paragraph of 35 USC § 112 cannot be sustained.
The examiner’s § 103 rejection of these claims as being unpatentable over Fromm
in view of Parrish also cannot be sustained. As correctly argued by the appellants and not
contested by the examiner, the applied references contain no teaching or suggestion of the
independent claim 27 recitation of “the graphite being contained in one or more baskets
having at least a base which has a grill or perforations to allow graphite particles to fall
therethrough” and of “causing the scrap graphite to disintegrate and graphite particles to
fall through the grill or perforations”. Nevertheless, the examiner considers his § 103
rejection to be proper. In this regard, the examiner urges that “to be entitled to weight in
method claims, the recited structural limitations therein must affect the method in a
manipulative sense (citing Ex parte Pfeiffer, 135 USPQ 31 (Bd.App. 1961)) and that “the
placement of the graphite into baskets having perforated bottoms [pursuant to the
appealed claims], does not affect the method in any manipulative sense” (Answer, page
5).
Clearly, the above quoted recitation of claim 27 cannot be ignored. Furthermore,
even assuming without deciding that the examiner has properly interpreted and relied upon
the cited legal authority, the aforementioned claim recitation must be accorded “weight” in
the method claims under review. This is because, from our perspective, the recitation
plainly affects the here claimed method in a manipulative sense. For example, the
presence of a basket having a base with a grill or perforations unquestionably would affect
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