Appeal No. 1997-3839
Application No. 08/120,144
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 appellants' claim 5 to derive an understanding of the scope and content
thereof.
Before turning to the proper construction of the claims, it is important to review
some basic principles of claim construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock Mfg. Co. v. Greenleaf, 117
U.S. 554, 559 (1886) ("The scope of letters patent must be limited to the invention covered
by the claim, and while the claim may be illustrated it cannot be enlarged by language used
in other parts of the specification."); Autogiro Co. of Am. v. United States, 384 F.2d
391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee something different than what
he has set forth [in the claim]."). See also Continental Paper Bag Co. v. Eastern Paper
Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing Co. v.
American Fur Ref. Co., 198 U.S. 399, 410 (1905). Accordingly, "resort must be had in
the first instance to the words of the claim" and words "will be given their ordinary and
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