Appeal No. 1998-2558
Application No. 08/744,894
of Machida with that of Stutzbach. Along these lines, Machida
teaches that notches 23 and 24 function as air relief vents and
that flange 26 holds the battery cells in position. (Column 3,
lines 48-50 and 55-58.) These functions are necessary in
Machida and would not be possible if the tubular body were to
have a uniform wall thickness, i.e. a tubular body without
notches and a flange. Under these circumstances, it is our
judgment that one of ordinary skill in the art would have had no
incentive to replace Machida's tubular body having non-uniform
wall thickness with the "uniform wall thickness" tubular body of
Stutzbach.
By ignoring the "uniform wall" claim limitation, the
examiner committed reversible error. In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974) ("[E]very
limitation in the claim must be given effect rather than
considering one in isolation from the others."); In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) ("All words
in a claim must be considered in judging the patentability of
that claim against the prior art.").
For these reasons, we cannot uphold the examiner’s 35
U.S.C. § 103 rejection of appealed claims 1 and 3 through 11 as
unpatentable over Machida in view of Stutzbach.
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