Appeal 2006-3206
Application 09/550,276
anticipation and of obviousness over the applied prior art because all of the
claim limitations must be considered. See, e.g., In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering
grounds of rejection “every limitation in the claim must be given effect
rather than considering one in isolation from the others.”); cf. Donaldson, 16
F.3d at 1195-97, 29 USPQ2d at 1850-52.
Here, the Examiner has not interpreted the “means” language in the
appealed claims with respect to the “corresponding structure” in the
specification and “equivalents” thereof in a manner consistent with the
requirements of 35 U. S. C. § 112, sixth paragraph, and indeed, has
suggested “means” language to Appellant without such findings
(Supplemental Answer in entirety).
We further have considered the disclosure with respect to “Surmodics,
Inc.” in the specification (original specification 5:17) as cited by the
Examiner (Supplemental Answer 9). The actual process performed by this
commercial entity with respect to “[t]he inner wall of the cylinder is
modified for photo cross-linking by SurModics, Inc. Eden Prairie, MN” are
not apparent from this disclosure (original specification 5:17-22). It is
further has not been established on the record whether the process was
known and thus prior art to Appellant under 35 U.S.C. § 102(a) (2002).
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to (1) supply the
correct citation for Izumi; (2) establish on the record whether the substitute
specification and abstract with the amendment filed August 12, 2002 have been
entered; (3) interpret the “means” limitations of the appealed claims by first
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