Appeal 2007-1710
Application 10/098,016
Office personnel may rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed.
Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the specification,
which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343,
1348, 64 USPQ2d 1202, 1205 (Fed. Cir. 2002) (emphasis in original) (citing
Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053, 12 USPQ2d
1474, 1476 (Fed.Cir.1989)).
On the issue of obviousness, the Supreme Court has recently stated
that “the obviousness analysis can not be confined by a formalistic
conception of the words teaching, suggestion and motivation.” KSR Int’l
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Further, the court stated “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 82
USPQ2d 1385, 1395 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
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