Ex parte GOEDKEN et al. - Page 5




              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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