Appeal No. 1996-1235 Paper No. 33
Application No. 08/067,262 Page 3
The examiner has rejected (Paper No. 20 (Ex. Ans.) at 3) all
pending claims under 35 U.S.C. § 102(e) 3 as anticipated by
Gagliardo et al., U.S. Patent No. 5,043,874 (27 Aug. 1991) (filed
3 Feb. 1989) ("Gagliardo").
Appellants have eighteen independent claims. The examiner
has rejected all of the independent claims as a single group
(Paper No. 20 at 3-4). Appellants state that their claims stand
or fall together (Paper 19 (App. Br.) at 3). Appellants only
argue the limitations of claim 1 (reproduced in the Appendix),
even though the other independent claims have different scopes.
In particular, claim 53 (reproduced in the Appendix) is broader
than claim 1 with respect to the contested limitation.
DISCUSSION
Claim construction
The starting point for any patentability analysis is the
construction of the claim. See Key Pharm. Inc. v. Hercon Labs. ,
161 F.3d 709, 713, 48 USPQ2d 1911, 1915 (Fed. Cir. 1998)
(observing that determining validity first requires claim
construction). However, "only those terms need be construed that
are in controversy, and only to the extent necessary to resolve
the controversy." Vivid Tech., Inc. v. American Sci. & Eng'g.,
Inc., 200 F.3d 795, 803, 53 USPQ2d 1289, 1294 (Fed. Cir. 1999).
Appellants rely on the following limitations in claim 1:
3 The examiner has withdrawn a second rejection under
35 U.S.C. § 112 of claim 9 (sometimes identified as claim 10)
(Paper No. 20 at 2, ¶ 4).
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