Appeal No. 2000-1832
Application 08/868,736
Schulze et al. (Schulze) 5,118,751 Jun. 2, 1992
Nishioka et al. (Nishioka) 5,192,366 Mar. 9, 1993
Penzel et al. (Penzel) 5,462,978 Oct. 31, 1995
Pak-Harvey et al. (Pak-Harvey) 5,519,084 May 21, 1996
The examiner has advanced the following grounds of rejection on appeal:
claim 43 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which applicants regard as the
invention (answer, page 3);
claims 32, 34, 36, 38, 39, 44 through 49, 51 through 54, 56 through 59 and 61 through 63 stand
rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Penzel (answer, page 4);
claims 33, 35, 37, 38, 40 through 48, 50 through 54, 56 through 59 and 61 through 63 stand
rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Schulze (answer, page 5);
claims 33, 35, 37, 38, 40 through 48, 50 through 54, 56 through 59 and 61 through 63 stand
rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Pak-Harvey optionally in view of Nishioka (answer, pages 5-6).
Appellants state in their brief that “[e]ach of the claims will be considered separately and
will stand or fall to the other” but do not argue any appealed claims other than claims 32, 33 and
43 with specificity (pages 4 and 9 through 14). Thus, we decide this appeal based on appealed
claims 32, 33 and 43. 37 CFR § 1.192(c)(7) (1999r).
We affirm the grounds of rejection of appealed claim 43 under § 112, second paragraph,
and of appealed claims 33, 35, 37, 38, 40 through 48, 50 through 54, 56 through 59 and 61
through 63 under § 103(a) as being obvious over Schulze, and reverse all other grounds of
rejection.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
In order to compare the claimed invention encompassed by appealed claims 32 and 33
with the applied prior art, and to consider the ground of rejection of appealed claim 43, we must
first interpret the terms of claims 32 and 33 in light of the written description in the specification
as interpreted by one of ordinary skill in this art. See, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54
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