Appeal No. 2003-1195
Application No. 08/526,339
While appellant’s arguments appear reasonable on their face,
the examiner’s response is actually an admission that Spangler
does not show the claimed features. At page 7 of the answer, the
examiner states that Spangler shows “the functional structure
that is shown in the specification but do not show the incorrect
structure that is described in the claims” [sic]. At the top of
page 8 of the answer, the examiner states that Spangler shows
“all the features shown in the specification and do not show the
features erroneously shown in the claims” [sic].
Accordingly, it would appear that the examiner is somehow
applying Spangler to what is disclosed in appellant’s
specification but is not applying the reference to the instant
claimed subject matter and the examiner admits as much.
Accordingly, the examiner’s rejections based on prior art are, on
their face, in error since it is the claimed subject matter to
which prior art must be applied in a rejection based on such
prior art.
Therefore, we will not sustain the rejection of claims 1-10
and 25-35 under 35 U.S.C. § 103.
If the examiner is trying to make a point that whereas the
specification describes a “correct” structure, the instant claims
do not set forth that structure, as disclosed, perhaps the
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