Appeal 2006-2985
Application 10/702,225
Cir. 1997). Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
Once we have determined the scope of the claims, we then examine whether
the prior art anticipates the claim. “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827
(1987). “To establish inherency, the extrinsic evidence ‘must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.’
‘Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) (citations omitted).
ANALYSIS
We interpret the scope of claim 1 to require a converter to convert sheet
stock material into a strip of dunnage having less mass per unit volume than the
starting sheet stock material. Fuss punches holes in its starting sheet stock material
which results in converted strips that have less mass per unit volume, and thus are
relatively less dense than the starting material. Fuss then uses a positioning device
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013