Appeal No. 1996-3814 Page 7
Application No. 08/348,835
magnetic particles as claimed (brief, pages 16 and 17 and
reply brief, pages 3-6). Thus, a determinative issue
presented by the rejection is whether or not it is appropriate
to interpret the claimed step of "providing a substrate formed
with grooves arranged in accordance with predetermined
patterns and a magnetized magnetic substance filling said
grooves" as encompassing or having been rendered obvious by
Marechal's disclosure of side-by-side tracks as relied upon by
the examiner. In proceedings before the Patent and Trademark
Office, claims in an application are to be given their
broadest reasonable interpretation consistent with the
specification and as they would be viewed by one skilled in
the art. See In re Sneed, 710 F.2d 1544, 1546, 218 USPQ 385,
388 (Fed. Cir. 1983). It follows that the claimed provision
of a substrate having predetermined grooves filled with
magnetized magnetic particles may be broadly interpreted as
encompassing the alternating tracks of Marechal in accordance
with the examiner's position only if such an interpretation is
reasonable and consistent with the subject specification.
We observe, however, that appellants' specification
including the various embodiments and drawing figures
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007