Appeal 2006-2120
Application 09/890,863
cut-resistant fabric disclosed by Weber in the speaker cone of RD ‘439,
when RD ‘439 only discloses speaker cones with PBO diaphragms (p. 679)
while Weber discloses PBO and dyed polyester yarns used to produce cut-
resistant gloves (Table 2).
For the foregoing reasons, we determine that the Examiner has failed
to establish a prima facie case of obviousness in view of the reference
evidence. Therefore we reverse the rejection of claims 21-24 under § 103(a)
over RD ‘439 in view of Weber.
D. Remand to the Examiner
Pursuant to the provisions of 37 C.F.R. § 41.50(a)(1), we remand this
application to the jurisdiction of the Examiner for the Examiner and
Appellants to review the patentability of claims 19-24 under 35 U.S.C.
§ 112, second paragraph. Specifically, we remand to the Examiner for a
determination of the definiteness of the claim language “a fiber with poor
dye-affinity such as PBO.” We determine that PBO is the only such fiber
disclosed in the original disclosure. We also determine that the cited prior
art does not disclose or suggest the “dye-affinity” of PBO or other fibers,
much less disclose or suggest what “poor dye-affinity” encompasses.
Furthermore, we find that the original disclosure fails to define the relative
term “poor dye-affinity” or provide any guidance as to how to determine the
scope of this term. Accordingly, the scope of the claims appears to be
indeterminate or indefinite. See Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984); Ex
parte Anderson, 21 USPQ2d 1241, 1249 (Bd. Pat. App. & Int. 1991).
E. Summary
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