Appeal No. 2004-0189 Page 4
Application No. 09/782,782
(1) stated that the claim term "about" has not been defined at all by the appellants;
(2) stated that the appellants have given no indication as to the scope of the term
"about;" (3) determined that this limitation is met by Hayashi's outer cover having a
Shore D hardness of 53 since one skilled in the art would consider the claimed Shore D
hardness of greater than "about" 56 to be readable on a Shore D hardness of 53; and
(4) concluded that the claimed Shore D hardness of greater than "about" 56 to be prima
facie obvious2 from Hayashi's teaching of a Shore D hardness of 53. Thus, this appeal
requires us to fully understand3 the scope of the terminology "about" as used in the
claims under appeal.
Our review of independent claims 1 and 18 reveals that we are unable to derive a
proper understanding of the scope and content thereof. Specifically, the terminology
2 The Federal Circuit stated in In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382
(Fed. Cir. 2003) that a prima facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art would have expected them to
have the same properties (citing to Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3%
molybdenum, up to 0.1% maximum iron, balance titanium”would have been prima facie obvious in view of
a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94%
nickel, 0.31% molybdenum, balance titanium).
3 Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 103 begins with a
determination of the scope of the claim. The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir.
1988).
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