Appeal 2007-2176
Application 10/309,852
ANALYSIS
The examiner has certainly complied with his obligation to read the
claims broadly, but Furukawa contends the reading is not reasonable.
Alternative I, in which the bottom dent 99 is the fusible fixing
member, is reasonably consistent with claim 17 except in its treatment of the
"providing a fusible fixing member" and "engaging the fusible fixing
member with the outer overclad tube". The examiner contends that creating
the dent 99 meets the engaging step, but if so what meets the providing step?
Moreover, it stretches ordinary understanding to say that creating a dent in a
tube is the same as "engaging [the dent] with the…tube". We find the
engaging step is missing in this alternative.
Alternative II, in which the top dent 98 is the fusible fixing member,
requires a frame-of-reference shift such that the top of Berkey's assembly is
the "distal end" of the claims. The problem with this reading is that the
specification pretty clearly defines "distal" to mean "lower".29 If this were
an obviousness rejection under 35 U.S.C. 103, it would be possible to apply
a teaching from the top of the assembly to the bottom of the assembly. An
anticipation rejection, however, must actually or inherently satisfy each
limitation of the claim without resort to obvious modifications. We find that
fixing the plug at the distal end is missing in this alternative.
Alternative III, in which the capillary tube 104 is the fusible fixing
member, appears to meet the limitations of claim 17. The capillary tube 104
is separately "provid[ed] for fixing the plug [tablet C]" and then
"engage[ed]" with the lower end of the tube 90 "thereby fixing the plug
29 Specification (Spec.) 5.
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