Appeal No. 2004-1908
Application No. 09/176,374 Page 3
§ 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as invention. Claims 1-19 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Machida in
view of Takeuchi.
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellant and the examiner concerning the issues before us on
this appeal.
OPINION
We find ourselves in agreement with appellant’s position for
each of the maintained rejections because the examiner has failed
to carry the burden of establishing a prima facie case in each
instance. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Accordingly, we will not sustain
the examiner's rejections. Our reasoning follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of
appellant’s specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
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