Appeal No. 2003-0031
Application No. 09/240,176
basis on the record before us for the Examiner interpreting the
claim language in this manner. In our view, the Examiner’s
interpretation could only be reached by pointedly ignoring the
precise language of the claims on appeal. Our reviewing courts
have held that, in assessing patentability of a claimed
invention, all the claim limitations must be suggested or taught
by the prior art. In re Royka, 490 F.2d 981, 983-84, 180 USPQ
580, 582 (CCPA 1974). All words in a claim must be considered in
judging the patentability of that claim against the prior art.
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
We recognize that the Examiner, at pages 6-8 in the
“Response to Argument” portion of the Answer has expanded his
stated position by asserting that, since the language of the
appealed claims lacks timing details, Osborne can be interpreted
as satisfying the claimed requirements. According to the
Examiner, Osborne’s disclosure can be interpreted as teaching
that the same buffer can perform the store and retrieve
functions, albeit at different times.
In our view, however, even assuming, arguendo, the
Examiner’s postulation concerning Osborne’s buffer functions is
correct, we fail to see how such an interpretation would satisfy
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007