Appeal No. 1997-4067
Application 08/285,324
cannot be used as though it were prior art, even where the
disclosure is found in the claims." General Foods v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281,
23 USPQ2d 1839, 1846 (Fed. Cir. 1992). "[P]atent claims are
looked to only to see what has been patented, the subject
matter which has been protected, not for something one may
find to be disclosed by reading them." Id. at 1281,
23 USPQ at 1846, citing In re Aldrich, 398 F.2d 855, 859,
158 USPQ 311, 314 (CCPA 1968). What has been patented is
the subject matter covered by the claims. The question to
be asked in the analysis is whether the subject matter
covered by the present claims are obvious over the subject
matter covered by the claims of either the '821 patent or
the '328 application.
We are not aware of any legal support for the
Examiner's use of a hypothetical "claim" of the type
constructed here. The hypothetical claim does not represent
the actual claims of the present application, the '328
application, or the '821 patent. It may true that the
limitations represent commonly disclosed subject matter, but
the use of the term "claim" is erroneous and confusing.
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007