Appeal No. 95-4253
Application 07/890,394
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the examiner’s rejection of the appealed claims under 35 U.S.C. § 103 over Orrmins or Sublett
et al. or Touey et al. or Tamblyn et al. (answer, pages 3-5). 3
It is well settled that the application of the prior art to the claimed invention requires the
determination of the claimed invention encompassed by the appealed claims and that in making this
determination, the broadest reasonable interpretation must be given to the terms of the appealed claims
consistent with appellants’ specification as it would be interpreted by one of ordinary skill in this art. In
re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, the terms in the appealed
claims must be given their ordinary meaning unless another meaning is intended by appellants. See,
e.g., Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029; York Prods., Inc. v. Central Tractor
Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996), and cases
cited therein (a claim term will be given its ordinary meaning unless appellant discloses a novel use of
that term); Zletz, supra.
The examiner has premised the rejection on his contention that “‘tow’ is synonymous with
appellants [sic] claimed ‘thread’” (answer, page 3) but has not submitted any reason why one of
ordinary skill in the art would find that the broadest reasonable interpretation of the term “thread” based
on appellants’ specification would include a “tow” as this term is used in Sublett et al. or Touey et al.
(note particularly the definition of “tow” at col. 1, lines 57-60) or Tamblyn et al. Indeed, as pointed 4
out by appellants in their reply brief (Paper No. 27), the term “thread” as used in their specification
(page 4, second full paragraph) would be interpreted by one of ordinary skill in this art to have its
ordinary meaning which, as shown by their dictionary citation, is not inclusive of a “tow.”
It is further well settled that the examiner must satisfy his burden of establishing a prima facie
case of obviousness under § 103 by showing some objective teaching or suggestion in the
3The references relied on by the examiner are listed at page 2 of the answer. We refer to these
references in our opinion by the name associated therewith by the examiner.
4As relied on by the examiner, Orrmins discloses a “loose, airy wadding H of loose, airy fibrous
material” (col. 4, lines 8-9) which is not a “tow.”
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