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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