Appeal No. 2003-1974
Application 09/317,409
the stiffness-treated prepreg ply, when disposed on the second prepreg ply comprising a
resin system and a fabric selected from the group consisting of the stiffness-treated fabric and
untreated fabrics, exhibiting a frictional resistance between the stiffness-treated prepreg ply and
the second prepreg ply sufficiently greater than the frictional resistance between two untreated
prepreg plies disposed on one another, where each of the two untreated prepreg plies comprises
the resin system and an untreated fabric, so as to enhance resistance to core crush during
fabrication of a honeycomb core structure from the honeycomb structure precursor.
The reference relied on by the examiner and appellants in the grounds of rejection is:
Corbett et al. (Corbett) 5,895,699 Apr. 20, 1999
The examiner has advanced the following grounds of rejection on appeal:
claims 55 and 57 through 59 stand 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
applicant regards as the invention; and
claims 55 and 57 through 59 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Appellants state in their brief that the appealed claims “stand or fall together” (page 3).
Thus, we decide this appeal based on appealed claim 55. 37 CFR § 1.192(c)(7) (2002).
We affirm the ground of rejection under 35 U.S.C. § 112, first paragraph, written
description requirement, and we reverse the ground of rejection under 35 U.S.C. § 112, second
paragraph.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
The initial burden of establishing a prima facie case on any ground under the second
paragraph of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984) (“As discussed in In re Piasecki, the examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). In making out a prima facie case of non-compliance with this statutory
provision on the basis that a claim is indefinite for failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention, the examiner must establish
that when the language of the claim is considered as a whole as well as in view of the written
description in the specification as it would be interpreted by one of ordinary skill in the art, the
- 2 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007