Appeal No. 2004-1944 Page 8
Application No. 09/255,673
Moreover, we note that the examiner’s attempt to correlate
the teachings of Merkh with the claimed subject matter is further
flawed by the examiner’s position in equating the well (86) of
Merkh with both appellant’s claimed chamber and appellant’s
claimed “features”. See the sentence bridging pages 3 and 4 of
the answer and the following sentence on page 4 of the answer.
Of course, the features referred to in appellant’s claims
represent an additional limitation and not merely a redundant
recitation of the chamber. Accordingly, on this record, the
rejection fails for lack of a sufficient factual basis upon which
to reach a conclusion of obviousness. In re Fine, 837 F.2d 1071,
1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). It follows that
we reverse the examiner’s stated § 103(a) rejection for failure
to make out a prima facie case of obviousness for substantially
the reasons as set forth above and in the briefs.
CONCLUSION
The decision of the examiner to reject claims 32-47 under
35 U.S.C. § 112, second paragraph, as being indefinite for
failure to particularly point out and distinctly claim that which
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