Appeal No. 2002-1904
Application No. 09/156,540
teaches, on the contrary, that an actual, practical club is best used in that particular
application. Col. 9, l. 5 et seq.
Butler’s teaching of a high speed camera and data acquisition subsystem for
acquiring additional important parameters would have suggested combination with the
system of Schmoll. Thus, while we regard Schmoll as teaching a high-speed video
camera within the meaning of instant claim 16, the combined teachings of Schmoll and
Butler would have suggested an even higher speed video camera, capable of recording
several images of a golf ball as it is propelled from the head of a club.
We have considered all of appellants’ arguments in response to the rejection of
claims 1, 2, 9, 16, 23, 28, and 31-34 under 35 U.S.C. § 103 as being unpatentable over
Nesbit, Schmoll, and Butler. We are in substantial agreement with the examiner that
the bulk of appellants’ arguments are not commensurate with the scope of the invention
set forth by representative claim 16. The claims measure the invention. SRI Int’l v.
Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en
banc). During prosecution before the USPTO, claims are to be given their broadest
reasonable interpretation, 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, 1404-05, 162 USPQ 541, 550 (CCPA
1969).
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