Appeal No. 2001-1918
Application No. 09/096,999
that embodiments of appellant’s invention may be superior in some respects to
Blocher’s preferred embodiment does not speak to the scope of invention circumscribed
by instant claim 1. Claims are to be given their broadest reasonable interpretation
during prosecution, and the scope of a claim cannot be narrowed by reading disclosed
limitations into the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969). We do
not consider the arguments to be commensurate with the scope of the invention that is
claimed.
Moreover, the rejection relies on a combination of references. The Brief speaks
extensively of alleged merits of the instant invention, in comparison to Blocher, but
appears to ignore the teachings of CO-NETIC. (See, e.g., Brief at 14, “[t]he present
invention is not anticipated by Blocher....”). However, nonobviousness cannot be
established by attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097, 231
USPQ 375, 380 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981)).
We find that CO-NETIC describes materials for magnetic shielding for fields from
DC to 100 kHz. Page 3, col. 1, “Magnetic vs. RF Shielding.” CO-NETIC also teaches
that, in environments requiring particular attention to the effects of electromagnetic
interference, fluorescent lighting usually has intolerable magnetic noise. Page 4, col. 1,
-8-
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