Ex Parte RIENER et al - Page 3




          Appeal No. 2003-1477                                                        
          Application No. 09/248,533                                                  


                    mounting a plurality of contact-bound-mode module                 
               contact zones on the first side of the carrier layer;                  
                    depositing a plurality of contactless-mode module                 
               contact zones on the second side of the carrier layer                  
               by means of a printing method; and                                     
                    electrically coupling the contact-bound-mode                      
               terminals of the chip to the contact-bound-mode module                 
               contact zones and electrically coupling the                            
               contactless-mode terminals of the chip to the                          
               contactless-mode module contact zones.                                 
               The references set forth below are relied upon by the                  
          examiner in the § 102 and § 103 rejections before us in this                
          appeal:                                                                     
          Prancz (Prancz ‘424)          6,095,424           Aug. 01, 2000             
          Prancz et al. (Prancz ‘570)   WO 97/05570         Feb. 13, 1997             
          Appellants’ Admitted Prior Art (Specification page 1, lines 1-28)           
               Claims 4-9 are rejected under 35 U.S.C. § 112, second                  
          paragraph, as being indefinite for failing to particularly point            
          out and distinctly claim the subject matter which the appellants            
          regard as their invention.                                                  
               Claims 1-8, “as understood”2 (answer, page 3), are rejected            

               2 In making his above-noted prior art rejections, notwithstanding the  
          presence of his § 112, second paragraph, rejection, the examiner has failed to
          proffer claim interpretations upon which these prior art rejections are based
          pursuant to the guidelines set forth in the Manual of Patent Examining      
          Procedure (MPEP) section 2173.06 (8th ed. Rev. 1, Feb. 2003).  Instead, the 
          examiner has improperly categorized the prior-art rejected claims with the  
          unembellished and uninformative phrase “as understood”.  This impropriety on
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