Appeal No. 2003-1599
Application 09/494,028
5, 6, 8, 9, 14, 15, 17, 23, 24, 26 and 27 under 35 U.S.C. § 103(a) as being unpatentable over
Winburn in view of Cox.1
The application of prior art to the claims requires as a first step, the determination of the
broadest reasonable interpretation of the language of the claims in light of the written description
in appellants’ specification as it would be interpreted by one of ordinary skill in this art. See,
e.g., In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006 (Fed. Cir. 2002); In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, all claim limitations must be
given effect. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976); In re
Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974); In re Wilder, 429 F.2d
447, 450, 166 USPQ 545, 548 (CCPA 1970). Whether a statement of purpose or intended use in
the preamble of a claim and/or in the body of the claim constitutes a limitation or limitations that
is/are necessary in order to give meaning to the claim and properly define the invention, is
determined in the context of the claimed invention as a whole, including consideration thereof in
light of the written description in appellants’ specification. See generally In re Paulsen, 30 F.3d
1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Fritch, 972 F.2d 1260, 1262, 23 USPQ2d 1780,
1781 (Fed. Cir. 1992), citing Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896,
221 USPQ 669, 675 (Fed. Cir. 1984), Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987) (“Whether a [statement] . . . of intended purpose
constitutes a limitation to the claims is, as has long been established, a matter to be determined
on the facts of each case in view of the claimed invention as a whole.”).
The language of appealed claim 1 illustrates, with the supplied italicized emphasis, the
dispositive claim interpretation issue with respect to the first and third grounds of rejection:
1. A dish assembly adapted to be positioned in a lid of a full top casket, said assembly
comprising:
1 Claims 4, 7, 13, 16, 18, 25 and 28 through 34 are also of record and have been allowed by the
examiner.
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Last modified: November 3, 2007