Appeal No. 1998-2144
Application No. 08/568,847
the language merely sets out an intended field of use. However, an accepted principle in
the interpretation of a Jepson-type claim is that the preamble represents actual scope of
the claim, rather than mere field of use. Therefore, a rejection under 35 U.S.C.
§ 103, which is required to set out underlying factual findings as described by
Graham v. John Deere Co., 383 U.S. 1 (1966), must show how the combination as a
whole would have been rendered obvious by the prior art, including the limitations in the
preamble of the claim. The claims are not directed merely to “improvements,” but to
improvements within the prior art structures set forth.
Since the references as applied fail to establish prima facie obviousness of the
claimed subject matter as a whole, we cannot sustain the rejection under 35 U.S.C.
§ 103.
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007