Ex Parte Curtin - Page 6

               Appeal No. 2007-3253                                                                         
               Application 10/733,414                                                                       
                      Here, the “means” limitations in claims 1, 2, and 8 recite function but               
               not structure sufficient to carry out the function and thus, comply with                     
               35 U.S.C. § 112, sixth paragraph.  These limitations have not been                           
               considered with respect to the corresponding structure and equivalents                       
               thereof in the Specification as required by 35 U.S.C. § 112, sixth paragraph.                
               Thus, the Examiner did not first interpret the “means” claim language in the                 
               claims before applying the prior art and, therefore, did not consider all of the             
               claim limitations in making out the grounds of rejection.  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.                                         
                      Accordingly, in the absence of consideration of all of the claim                      
               limitations, the Examiner has not established a prima facie case of                          
               anticipation and of obviousness.                                                             
                      Therefore, we reverse the grounds of rejection advanced on appeal.                    
                      The Primary Examiner’s decision is reversed.                                          
                                                 Remand                                                     
                      We remand the application to the Examiner for consideration and                       
               explanation of the issues raised by the record.  37 C.F.R. § 41.50(a)(1)                     
               (2007); Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed.,                         
               Rev. 5, August 2006).                                                                        
                      Upon further examination of the appealed claims subsequent to the                     
               disposition of Appeal, the Examiner is to consider the “means” imitations in                 
               the appealed claims with respect to the requirements of 35 U.S.C. § 112,                     


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