Appeal No. 2002-1235
Application No. 08/823,823
Appellant presents separate arguments for claims 1, 4, 5, 6
and 7, whereas claims 2, 3 and 8-11 stand or fall together with
the claims upon which they depend.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we concur
with appellant that the examiner's rejections are not well-
founded. Accordingly, we will not sustain the examiner's § 112
and § 103 rejections.
Concerning the examiner's rejection of claims 1-4 under
§ 112, second paragraph, it is the examiner's position "the
phrase 'capable of' renders the claim indefinite because it is
unclear whether the limitations following the phrase are part of
the claimed invention" (page 3 of Answer, last sentence).
However, we agree with appellant that the claim language is an
appropriate use of functional language which requires that the
recited ring be capable of being attached to the disk such that
it covers the power calibration area but not the data area. The
examiner has not met the initial burden of explaining why, prima
facie, one of ordinary skill in the art would not be reasonably
apprised of the scope of claims 1-4.
We now turn to the examiner's § 103 rejection of all the
appealed claims. The examiner correctly states that it is part
-3-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007