Appeal 2007-0141
Application 10/654,324
should be rejected under 35 U.S.C. § 112, ¶ 2. See In re Zletz, 893 F.2d 319,
322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (if claims do not “particularly
point[ ] out and distinctly claim[ ]”, in the words of section 112, appropriate
PTO action is to reject the claims for that reason) and In re Bigio, 381 F.3d
1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)(“[A] patent applicant
has the opportunity and responsibility to remove any ambiguity in claim
term meaning by amending the application.”). Cf. In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)(rejections under
35 U.S.C. § 103 cannot be based on speculations and assumptions).
Appellants maintain that the term "degrade" is used to illustrate that
the filaments forming the claimed fabric do not decompose at bonding
temperatures of about 180°C to 250°C. (Br. 5).1 Appellants argue that this
interpretation is supported by the Specification description of the qualities of
the resulting fabrics as exhibiting substantially the same qualities as various
known spunbonded nylon fabric. (Br. 5). The Examiner argues that the
word “degrade” does not reasonably convey whether “the appellant is
claiming that the filaments do not melt, soften, weaken, change color,
lengthen, shorten, chemically decompose, etc.” (Answer 6).
Appellants have not identified any language in the specification or
provided other evidence which convincingly shows that a person of ordinary
skill in the art would have recognized the properties or characteristics that
are encompassed by the phrase “wherein said filaments do not degrade at a
temperature between about 180°C and about 250°C.” Thus, we are unable
1 These arguments were made in response to the rejection under 35 U.S.C.
§ 112, ¶ 1.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013