Appeal No. 1997-4305
Application No. 08/477,023
DISCUSSION
“The name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998). In considering the issues raised in this
appeal, we point out that “analysis begins with a key legal question – what is the
invention claimed?” since “claim interpretation . . . will normally control the remainder
of the decisional process.” Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1567, 1 USPQ2d 1593, 1596 (Fed. Cir.), cert. denied, 481 U.S.
1052 (1987). On this record, instead of beginning his analysis with this “key legal
question,” the examiner concludes his analysis with an interpretation of the claimed
invention. Specifically, the examiner finds (Answer, page 3) that “the use of ‘up to
1000 ppm’ embraces ‘zero to 1000 ppm’ and reads on [the] absence of sb [sodium
benzoate].”
However, when the claims are considered as a whole, we can not agree with
the examiner’s interpretation. The limitation “up to 1000 ppm” appears in claim 7,
step 1, which requires the blending of sodium benzoate at a level up to 1000 ppm
into polypropylene. The very next step, step 2, of claim 7 resolves the examiner’s
issue, and demonstrates that up to 1000 ppm must be something more than zero,
since this step requires a “polypropylene-sodium benzoate mix.” In the absence of
sodium benzoate there would be no polypropylene-sodium benzoate mix and we
could not move past the second step of appellant’s claimed process.
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