Appeal No. 1998-3405
Application No. 08/378,745
present application. The examiner maintains that there is no express language required to
invoke 35 U.S.C. § 112, sixth paragraph. (See answer at page 4.) We agree with the
examiner, but note that the examiner has only generically addressed the changes to the
language of the claims. Furthermore, the examiner has not interpreted all the changes in
light of the corresponding structure in the specification, and the examiner has not
addressed any specific claim limitations which are structural in nature, such as, a counter,
memory, comparator, etc. which may preclude the invocation of 35 U.S.C. § 112, sixth
paragraph since it recites specific structure and not a functional recitation of a claim
limitation. Here, the examiner has made no findings/evaluation concerning the appropriate
claim interpretation in the present prosecution history, and the prosecution history of the
parent prosecution history to the Dawson patent is completely silent with respect to claim
interpretation under 35 U.S.C. § 112, sixth paragraph. (See MPEP 2181 et seq. for a
discussion of 35 U.S.C. § 112,
sixth paragraph.) Therefore, we must reverse the rejection under 35 U.S.C. § 101
based on double patenting since the claims are not per se directed to the same invention
as recited by the express language of the claims.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007