Appeal No. 2000-0565
Application No. 08/539,840
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the respective
positions articulated by the appellant and the examiner. For the reasons which follow, we
cannot sustain either of the examiner's rejections.
Before addressing the examiner's rejections based upon prior art, it is essential that the
claimed subject matter be fully understood. Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. §§ 102 and 103 begins with a determination of the scope of the
claim. The properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. See Smithkline Diagnostics, Inc.
v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Accordingly, we will initially direct our attention to independent claims 1 and 11 to derive an
understanding of the scope and content thereof.
Claim 1, in reciting "[a] bicycle seat gas spring adjustment system inserted into a seat
tube and operated in conjunction with a conventional seat post and a bottom bracket," with the
first half of the gas spring "substantially bearing with said conventional seat post" and the
second end of the gas spring "substantially bearing upon said bottom bracket," necessarily
includes the seat tube, seat post and bottom bracket as part of the claimed invention.
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