Appeal No. 2002-0376
Application No. 09/072,137
teachings of compaction generally and added his opinion that the present invention is
not patentable. (See brief at page 8.) We agree with appellants that the examiner has
merely provided a laundry listing of citations without any relevant discussion of how
those portions of references meet the recited limitations. Appellants argue that the
examiner has not set forth how each and every limitation of the claimed invention is
allegedly shown by the prior art. (See brief at page 9.) We agree with appellants and
find that the examiner’s lengthy discussion in the response to the arguments section
again does not address how each and every limitation of the claimed invention is
allegedly shown by the prior art. (See answer at pages 6-15.) We find that the
examiner’s contortions of the recited claim limitations simplifies and changes the
invention as claimed by 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). Here, the
examiner has not addressed the claim, but the examiner’s iterative analysis of the claim
to distill it down to a modified claim as set forth on page 11 of the answer.
Appellants argue that none of the applied references disclose the specific claim
limitations. (See brief at page 10.) We agree with appellants. We have reviewed the
prior art applied by the examiner paying special attention to the cited portions, and we
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