Appeal No. 1998-2523
Application No. 08/778,644
rejections are not well founded. We need to address only claim 18, which is the sole
independent claim.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellants concerning the above-noted rejections, we refer to the Answer, Brief and
Reply Brief for the full exposition thereof.
Our initial inquiry is directed to the scope of the claimed subject matter.
During patent prosecution, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the claim language is to be read in
view of the specification as it would be interpreted by one of ordinary skill in the art.
In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989);
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976).
The patentability of a product recited in product-by-process claims is based on
the product itself. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 965-66 (Fed.
Cir. 1985); Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007