Appeal No. 95-1187
Application 08/024,495
which further suggests an intent to claim in terms of broad
functions instead of specific steps.
4. At the hearing, Applicant's agent stated that the claim
did not fall within paragraph six, but he offered no explanation
for his statement. On this record, Applicant has not overcome
the presumption that paragraph six applies. Hence, we must
construe claim 8 to cover to the acts disclosed in the
specification or their equivalents. 35 U.S.C. § 112; In re
Donaldson Co., 16 F.3d 1189, 1195 n.5, 29 USPQ2d 1845, 1850 n.5
(Fed. Cir. 1994) (in banc); Valmont Indus. v. Reinke Mfg.,
983 F.2d 1039, 1041-42, 25 USPQ2d 1451, 1453-54 (Fed. Cir. 1993).
The subject matter of claim 8 was not obvious
5. Even if the invention is not identically disclosed or
described in the prior art reference, it is unpatentable if the
claimed subject matter would have been obvious to a person having
ordinary skill in the art. 35 U.S.C. § 103(a).
6. A determination of obviousness based on a particular
prior art reference requires a suggestion or motivation to modify
the teachings of that reference. This suggestion or motivation
need not be expressly stated. B.F. Goodrich Co. v. Aircraft
Braking Sys., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir.
1996).
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