Appeal No. 1998-1822 Page 5
Application No. 08/627,213
process with a reasonable degree of precision and clarity,
especially when read in light of appellants’ specification.
The examiner’s questioning of several of the terms of
claims 11 and 14 (answer, page 9 and pages 16-18) appears to
be premised on the examiner’s preference for somewhat
different wording in the claims as well as the examiner’s
concern with claim breadth rather than with the establishment
of any actual ambiguity or indefiniteness of the language
employed by appellants. In short, the examiner has apparently
not given due regard to the principle that claims are not to
be interpreted in a vacuum, but in light of information
disclosed in appellants’ specification and knowledge available
in the prior art as understood by a person of ordinary skill
in the art. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Consequently, we will not sustain the
rejection under 35 U.S.C. § 112, second paragraph.
Rejections Under 35 U.S.C. § 103
The examiner has not carried the burden of explaining how
the teachings of Pratt and Harrier, in combination, furnish
sufficient evidence to have reasonably suggested the method of
either of the independent claims 1 and 11, on appeal. As
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007