Appeal 2007-0870
Reissue Application 09/902,904
Patent 6,038,784
underlying surface and, thereby, the bottom face of the tray recited in claim
2.
Accordingly, on the record before us, we sustain the Examiner's
rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as indefinite.
We recognize the inconsistency implicit in our decision to sustain the
rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as being
indefinite with an analysis of whether claim 2 is anticipated under 35 U.S.C.
§ 102(b) or obvious under 35 U.S.C. § 103(a). Normally, when substantial
confusion exists as to the interpretation of a claim and no reasonably definite
meaning can be ascribed to the terms in a claim, a determination as to
unpatentability based on anticipation or obvious is not made. In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962); In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). However, in this
instance, we consider it to be desirable to avoid the inefficiency of piecemeal
Appellate review. Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
For purposes of our patentability analysis, we interpret Appellants' claim 2
as requiring "a tray having a bottom face that is adapted to be supported by
an underlying surface" because Appellants' specification does not limit the
underlying surface to any particular surface (see e.g., col. 2, ll. 1-3, and 56-
58). We also note that this interpretation is not inconsistent with Appellants'
assertion that a counter-top is not part of the claimed combination per se
(Br., 11).
C. Anticipation
To anticipate a claim, a prior art reference must, either expressly or
inherently, disclose each and every limitation in the claim. Verdegaal Bros.
11
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