Appeal 2007-3994
Application 10/072,906
Appellants argues claim 27 as representative of the claims in the first
and second grounds of rejection (Br. 3-6). Appellants apply the arguments
to the third ground of rejection (id. 6). Thus, we decide this appeal based on
claim 27. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case in each of the grounds of rejection
advanced on appeal.
The plain language of the claim 27 specifies a method of
manufacturing a metal reactor having overlapping corrugated sheets and a
housing comprising at least the step of preoxidizing the sheets and the
subsequent step of simultaneously joining, that is, fixing, the preoxidized
sheets to each other to any extent and to at least a part, however small, of the
housing to any extent by resistance welding. The transitional term
“comprising” opens the claim to include methods having additional steps,
and thus, methods having the step of fixing the overlapping sheets to each
other to any extent before or after preoxidizing and prior to further joining
the overlapping sheets to each other and simultaneously to at least a part of
the housing. See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l
Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000);
Genentech Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613
(Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802
(CCPA 1981).
We first consider the ground of rejection under § 112, first paragraph,
written description requirement. Appellants have rebutted the Examiner’s
contention that embodiments encompassed by the claims were not disclosed
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