Appeal 2007-1367
Application 10/703,596
Accordingly, we will sustain the Examiner’s § 102 rejection for essentially
those reasons expressed in the Answer.
We consider first the Examiner’s rejection under § 112, 2d ¶. It is the
Examiner’s position that the claim language “giving priority,” “top priority,”
“second priority,” and “lowest priority” is indefinite. The Examiner
explains that “[w]hat is considered a priority to one person may not be a
priority to another person” and that “[i]t is not clear from the claimed
invention what all encompasses the model, thus one of ordinary skill in the
art cannot ascertain the scope of the term ‘priority’” (Answer 3, penultimate
para.).
It is well settled that claim language is not to be read in a vacuum but
in light of the specification as it would be reasonably interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). In the present case, as pointed out by Appellants, the
Specification states that “the vibration which is felt most uncomfortable to
the passenger is suppressed always with the highest priority, whereby a more
comfortable ride is given” (Specification 7:9-12). Also, the Specification
discloses that the vibration calculation means include a tire model, a
suspension model, and a vehicle body model, and that the compensations to
reduce vibrations in the models are such that priority is given to the vehicle
body model (Specification 6:6-13). Accordingly, based on these specific
Specification disclosures, we are satisfied that one of ordinary skill in the art
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