Appeal 2006-3236
Inter Partes Reexamination Control No. 95/000,006
Patent Owners argue that claim 16 recites a planar body and a first
storage portion provided on a first surface of the main body, that the planar
main body is disclosed in the detailed description and represented with a
reference numeral, and that "[o]ne skilled in the art would be apprised of the
scope of claim 16 because that person would realize that a planar main body
includes a surface" (Patent Owners' Br. 20).
Requester responds (Requester's Br. 20):
Indeed, the detailed description of the '595 patent
discloses that the "tray main body 11" has an "upper surface."
See '595 patent, col. 3, ll. 59-61. This, however, cannot be the
"first surface of said main body" from which the "second wall
surface" extends in a "direction away", because the "second
wall surface" is a part of the "upper surface" of the tray. If the
"upper surface" of the tray were the "first surface of said main
body", the claim would nonsensically call for the "second wall
surface" to extend in a direction away from itself. Clearly,
Appellants argument does nothing to dispel the ambiguity and
vagueness of the language referenced in the rejection.
Patent Owners essentially repeat the arguments from the brief (Patent
Owners' Rebuttal Br. 8), without addressing Requester's arguments.
The Examiner agrees with the Requester's reasons why it is unclear
what surface is referred to by the limitation (Answer 35).
Analysis
As discussed in the rejection under 35 U.S.C. § 314(a), there was no
clear antecedent basis for "said first wall surface of said main body" in
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