Appeal No. 95-2743
Application 08/023,016
references, the examiner only responds to the arguments presented by the appellants in
their main brief. The examiner has not (i) engaged in a proper, fact-based analysis of what
subject matter is encompassed by the claims, or (ii) explained the relevance of the applied
prior art. Simply put, the examiner has not met her burden of presenting a prima facie
case of obviousness by showing that objective teachings in the applied prior art would
have suggested the claimed invention to one of ordinary skill in the art. Accordingly,
although we reverse the rejection, this does not mean that we find that the references cited
by the examiner are not relevant. See the “Other Issues” section, infra.
Other Issues
Upon return of this application to the examining corps, the examiner should
consider whether she has adequately determined what subject matter is encompassed by
the claims. In order to make a determination of obviousness, the examiner must first
interpret and understand what is the claimed invention. Panduit Corp. v. Dennison Mfg.
Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). We remind the
examiner that it is well settled that “[d]uring patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). Moreover, the
“specification acts as a dictionary when it expressly defines terms used in the claims ...
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