Appeal No. 2006-0548
Application 10/381,877
The examiner has rejected appealed claims 1, 8, 10 and 11 under 35 U.S.C. § 102(b) as
being anticipated by Basset (Office action mailed August 17, 2004 (Office action), page 2);
appealed claims 1 through 8 as being anticipated by Percec (Office action, page 3); and
appealed claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Basset (Office action,
page 3).1,2
Appellants argue each of the rejected claims individually. Thus, we decide this appeal
based on each of the appealed claims. 37 CFR § 41.37(c)(1)(vii) (September 2004).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief3 and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported finding advanced by the examiner that as a matter of fact, prima
facie, appealed claims 1, 8, 10 and 11 are anticipated by Basset, and claims 1 through 8 are
anticipated by Percec. Therefore, in view of the prima facie case of anticipation made out by the
examiner, we have again evaluated all of the evidence of anticipation and non-anticipation based
on the record as a whole, giving due consideration to the weight of appellants’ arguments in the
brief and reply brief. See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655,
1657 n.3. (Fed. Cir. 1990).
In order to review the examiner’s application of prior art to appealed claims 1, 8, 10 and
11, we first interpret these claims by giving the terms thereof the broadest reasonable
interpretation in their ordinary usage in context as they would be understood by one of ordinary
skill in the art in light of the written description in the specification unless another meaning is
intended by appellants as established in the written description of the specification, and without
reading into the claims any limitation or particular embodiment disclosed in the specification.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830
1 The examiner states that the grounds of rejection are set forth in the Office action (answer,
page 3).
2 The claims stated to stand rejected in the answer includes claim 12 which was not pending as
of the Office action (see Official Action Summary).
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