Appeal No. 2003-1007
Application No. 09/336,368
invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).
The examiner also argues that “the claims still fail to
particularly point out and distinctly claim how the RF power is
used in the activating step.” (Answer, page 5.) This argument
is also unpersuasive. Appealed claim 21 recites a process in
which the RF power level is from about 10W to about 80W. Other
than what is expressly recited, appealed claim 21 places no
limitation on “how” the RF power is used in the activation step.
This, of course, does not raise any issue of indefiniteness.
In re Goffe, 526 F.2d 1393, 1398, 188 USPQ 131, 135 (CCPA 1975).
For these reasons, we cannot uphold the examiner’s rejection
on this ground.
35 U.S.C. § 103(a)
The examiner’s prior art rejections based on Lee as a
primary reference are premised on the belief that the aromatic
groups on Lee’s siloxane derivatives (column 8, lines 12-40)
contain “carbon-carbon double bonds,” as required by appealed
claim 21. (Answer, pages 6 and 11.) But as pointed out by the
appellants (substitute appeal brief filed Sep. 3, 2002, paper 16,
page 4; reply brief filed Mar. 7, 2003, paper 18, page 3), it has
long been established that aromatic rings such as benzene contain
carbon-carbon bonds which are intermediate between single and
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007