Appeal No. 1996-3814 Page 7 Application No. 08/348,835 magnetic particles as claimed (brief, pages 16 and 17 and reply brief, pages 3-6). Thus, a determinative issue presented by the rejection is whether or not it is appropriate to interpret the claimed step of "providing a substrate formed with grooves arranged in accordance with predetermined patterns and a magnetized magnetic substance filling said grooves" as encompassing or having been rendered obvious by Marechal's disclosure of side-by-side tracks as relied upon by the examiner. In proceedings before the Patent and Trademark Office, claims in an application are to be given their broadest reasonable interpretation consistent with the specification and as they would be viewed by one skilled in the art. See In re Sneed, 710 F.2d 1544, 1546, 218 USPQ 385, 388 (Fed. Cir. 1983). It follows that the claimed provision of a substrate having predetermined grooves filled with magnetized magnetic particles may be broadly interpreted as encompassing the alternating tracks of Marechal in accordance with the examiner's position only if such an interpretation is reasonable and consistent with the subject specification. We observe, however, that appellants' specification including the various embodiments and drawing figuresPage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007