Appeal No. 1999-1813 Page 3
Application No. 08/801,010
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The Rejection Under The Second Paragraph Of Section 112
It is the examiner’s opinion that the claims are indefinite because the appellant
defines the invention in claim 1 in part by reference to the uneven floors that it connects,
which admittedly are not part of the claimed invention. The appellant has responded to this
rejection by citing and discussing the applicable case law which, in sum, stands for the
proposition that it is permissible to define an invention in terms of an item with which it is
used (Brief, pages 5 and 6). For the reasons set forth by the appellant in the brief, we
agree that this rejection is not proper.
The rejection under Section 112 is not sustained.
The Rejections Under Section 103
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
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