Ex Parte LI et al - Page 7



                  Appeal No. 2003-1020                                                                                        Page 7                      
                  Application No. 08/859,051                                                                                                              
                  U.S.C. § 103.3                                                                                                                          
                                                                 OTHER ISSUES                                                                             
                           Upon return of this case to the examining group, we would recommend that                                                       
                  appellants and the examiner review claims 116 and 122 for clarity.  It appears that                                                     
                  appellants’ argument that “the claim[s] as [presently] worded [do] not make sense” is                                                   
                  well founded.                                                                                                                           
                                                                    REVERSED                                                                              



                                                                                          )                                                               
                                             Sherman D. Winters                           )                                                               
                                             Administrative Patent Judge                  )                                                               
                                                                                          )                                                               
                                                                                          )                                                               
                                                                                          ) BOARD OF PATENT                                               
                                                                                          )                                                               
                                             Hubert C. Lorin                              ) APPEALS AND                                                   
                                             Administrative Patent Judge                  )                                                               
                                                                                          ) INTERFERENCES                                                 
                                                                                          )                                                               
                                                                                          )                                                               
                                                                                          )                                                               
                                             Toni R. Scheiner                             )                                                               
                                             Administrative Patent Judge                  )                                                               





                  Morrison & Foerster LLP                                                                                                                 
                  3811 Valley Centre Drive                                                                                                                
                  Suite 500                                                                                                                               


                           3 Having found that the examiner has not established a prima facie case of                                                     
                  obviousness for the claims on appeal, we find it unnecessary to comment on the                                                          
                  declarations executed June 28, 2000 and May 13, 2002.                                                                                   



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