Appeal No. 2003-1725
Application No. 09/357,645 Page 10
appellants regard as their invention. Appellants are not
required to employ claim terms that the examiner prefers.
In sum, the examiner has not explained why the claim
language, as it would have been interpreted by one of ordinary
skill in the art in light of appellants’ specification and the
prior art, fails to set out and circumscribe a particular area
with a reasonable degree of precision and particularity.
Consequently, we reverse the rejection under 35 U.S.C. § 112,
second paragraph.
Rejection under 35 U.S.C. § 103(a)2
Appellants have identified several groups of claims at pages
5-7 of the supplemental brief, the portion of the substitute
brief incorporated by reference therein, and the reply brief,
2 We confine ourselves to the evidence of obviousness before
us that is properly cited and applied by the examiner; that is,
Payne (U.S. Patent No. 5,441,231). In this regard, the
examiner’s spurious reference to “any tube occluder on earth”
(answer, page 7) is not taken as an identification with any
particularity of any reference that is actually applied by the
examiner. In fact, the only reference listed at page 3 of the
answer and the only reference identified in the statement of the
rejection is Payne. Such a reference to all tube occluders in an
examiner’s answer, without including proper citations, especially
in the statement of the rejection, serves only to confuse the
issues on appeal and is a practice which cannot be condoned. See
In re Hoch, 166 USPQ 406, footnote 3 (CCPA 1970). Nonetheless, we
consider that statement of the examiner to represent harmless
error in so far as our consideration of the examiner’s § 103(a)
rejection over Payne is concerned.
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