Appeal No. 1997-0917
Application 08/309,565
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied,
469 U.S. 851 (1984)).
With regard to the rejection of claims 1 through 13,
Appellants argue that the Examiner is redefining the
architecture of Li to identify alternate processing elements
in Li as being reconfigurable switches for purposes of
emulating the reconfigurable switches claimed. Appellants
state:
It is not valid for the Examiner to identify
some processing elements in Li as “switches” and
other processing elements in Li as “processing
elements” simply to find some correspondence with
the limitations of Appellant[s’] Claims 1, 2, and 3.
(Brief-page 7.)
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007