Appeal No. 1998-2552
Application No. 08/292,977
the claims on appeal under the second paragraph of section 112
as indefinite.
B. The Rejections under 35 U.S.C. § 102(b) and § 103(a)
It is well settled that the examiner bears the initial
burden of establishing a prima facie case of unpatentability,
whether on prior art grounds or any other basis. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In view of our claim construction above, the claimed
means-plus-function language is limited to the structures
disclosed in the specification “and equivalents thereof.” See
Al-Site Corp., supra. The examiner has failed to point to any
structure in Takahashi that is identical to that recited in
claim 33 that would support the rejection under
35 U.S.C. § 102(b). Furthermore, the examiner has failed to
establish that Takahashi discloses, suggests or teaches the
structures recited in claims 33 and 31. In other words, the 5
5The examiner applies Baumgart as evidence that use of a
vacuum pump to evacuate the space between the tube and the
preform is conventional in the art to prevent bubbles from
forming in the preform. Accordingly, Baumgart does not remedy
the deficiencies discussed above with respect to the
examiner’s findings from Takahashi.
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