Appeal No. 1999-0647 Page 3
Application No. 08/683,411
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellant's
specification and claims, the applied prior art references, and the respective positions articulated by the
appellant and the examiner. Based on our review, we shall not sustain the rejection.
Before addressing the examiner's rejections based upon prior art, it is essential that the claimed
subject matter be fully understood. Analysis of 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). Moreover, in proceedings before it, the PTO
applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997).
At the outset, we note that both independent claims 1 and 20 require a mulch "consisting of tree
bark, wood chips, and mixtures thereof impregnated with a borate salt." In this regard, appellant's
specification (page 8, lines 15-20) states:
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007