Appeal 1997-2572
Application 08/220,562
know is not evidence. Estee Lauder, Inc. v. L'Oreal, S.A.,
129 F.3d 588, 592, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
At this point, we feel comfortable in saying that both
the applicants and the examiner have missed the mark. Neither
applicants nor the examiner have properly determined the scope
of claim 1. But, claim scope determination is an essential
first step in resolving patentability. One cannot evaluate
the applicability of prior art to a claim without first
determining the scope of the claim!
The Federal Circuit said it best when it gave the
following sage advice: "The invention disclosed in *** [the]
written description may be outstanding in its field, but the
name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Moreover,
the Federal Circuit has provided meaningful guidance on how a
claim such as applicants' claim 1 should be construed. In
Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
793 F.2d 1279, 1281, 230 USPQ 45, 46 (Fed. Cir. 1986), the
following claim was before the court (material in bold added):
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