Appeal 2007-0257
Application 10/047,123
Patent claim is not invalid for indefiniteness unless it is insolubly
ambiguous; therefore, if the meaning of a claim is discernible, the claim is
sufficiently clear to avoid invalidity on indefiniteness grounds, even if
interpreting the claim is difficult, and construction is one over which
reasonable persons could disagree. Bancorp Services LLC v. Hartford Life
Insurance Co., 359 F.3d 1367, 69 USPQ2d 1996, 1999 (Fed. Cir. 2004)
An inherency teaching must be necessarily present in the structure described
in the applied reference. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 20 USPQ2d 1746, 1749 (Fed Cir. 1991). The Examiner must
provide extrinsic evidence, rather than an opinion, that makes 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.”
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268,
20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states,
“[t]he terms used in the claims bear a ‘heavy presumption’ that they mean
what they say and have the ordinary meaning that would be attributed to
those words by persons skilled in the relevant art.” Texas Digital Sys. Inc v.
Telegenix Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir.
2002).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013