Appeal 2007-2593
Application 09/859,359
1 an inventor is free to define the specific terms used to describe the invention, this
2 must be done with reasonable clarity, deliberateness, and precision; where an
3 inventor chooses to give terms uncommon meanings, the inventor must set out any
4 uncommon definition in some manner within the patent disclosure so as to give
5 one of ordinary skill in the art notice of the change).
6 Anticipation6
7 "A claim is anticipated only if each and every element as set forth in the claim
8 is found, either expressly or inherently described, in a single prior art reference."
9 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
10 1987). "When a claim covers several structures or compositions, either generically
11 or as alternatives, the claim is deemed anticipated if any of the structures or
12 compositions within the scope of the claim is known in the prior art." Brown v.
13 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
14 shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
15 Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
16 as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
17 terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
18 Obviousness
19 A claimed invention is unpatentable if the differences between it and the
20 prior art are “such that the subject matter as a whole would have been obvious at
21 the time the invention was made to a person having ordinary skill in the art.”
22 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007);
23 Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
24 In Graham, the Court held that that the obviousness analysis is bottomed on
25 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
8
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