Appeal No. 1997-3269
Application 07/918,519
invention by the express teachings or suggestions found in the
prior art or by the implication contained in such teachings or
suggestions. In re Sernaker, 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), cert. denied, 519 U.S.
822 (1996) (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)).
First, we must determine the scope of the claims. As our
reviewing court stated in Markman v. Westview Instruments, 52
F.3d 967, 979, 34 USPQ2d 1321, 1329-30 (Fed. Cir. 1995) (en
banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384,(1996):
Claims must be read in view of the specification, of
which they are a part. The specification contains a
written description of the invention that must enable one
of ordinary skill in the art to make and use the
invention. For claim construction purposes, the
description may act as a sort of dictionary, which
explains the invention and may define terms used in the
claims. (Citation omitted).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007