Appeal No. 1999-1876
Application No. 08/626,488
in the claims and assumptions as to the scope of the claims, but
rather, the claims should be rejected under § 112, second
paragraph. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). Accordingly, in view of the rejection under
§ 112, second paragraph, made above pursuant to 37 CFR
§ 1.196(b), we will not sustain the rejections of claims 10 and
12 to 14 under § 103(a). We emphasize that we take this action
pro forma, and that it should not be taken as an indication that
if claims 10 and 12 to 14 were amended to overcome the rejection
under § 112, they would necessarily be patentable under § 103(a)
over the references applied by the examiner in the final
rejection.
The § 103(a) rejection of claim 15 might well be treated in
the same manner. However, in an effort to avoid piecemeal
appellate review, we will for the purpose of this decision treat
"consisting of" in line 2 of claim 15 as if it were --comprising
--, and proceed to consider the § 103(a) rejection on that basis.
Cf. Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
Parker, the first of the two primary references applied by
the examiner, discloses a method of making a ball joint having a
socket and a ball-ended spindle. The manner in which Parker's
disclosure corresponds to the method recited in claim 15 is
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