Appeal No. 1998-3355
Application No. 08/665,167
examiner's answer (Paper No. 13, mailed May 7, 1998) for the examiner's reasoning in
support of the rejections, and to the appellants’ brief (Paper No. 12, filed Apr. 10, 1998) for
the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 102
Appellants argue that Eaton is not concerned with cross web tension, and contrary
to the examiner’s position, Eaton does not inherently minimize the tension on the tape, as
recited in claim 1. (See brief at pages 5-6.) We agree with appellants. As pointed out by
our reviewing court, we must first determine the scope of the claim. "[T]he name of the
game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998). Similarly, the examiner must address the explicit limitations set forth in
the claim to set forth the prima facie case of lack of novelty or obviousness. Here, the
language of claim 1 clearly recites that the “the top
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