Appeal No. 1998-2287
Application No. 08/211,157
characteristics. Hence, at best Griffith meets the
condition of amorphism but not the other
limitations. None of Narishige, Jahnes and
Nishimura meet the amorphism limitation, none is a
granular film. [Id. at p. 13.]
Thus, a principal question raised in this appeal is: what
is the scope of the term “substantially amorphous” appearing
in all of the appealed independent claims? Stated in a
slightly different way, we must first ascertain the scope of
the appealed claims before we can decide whether the examiner
applied the prior art correctly against the subject matter of
the appealed claims. Gechter v. Davidson, 116 F.3d 1454,
1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994). In our analysis, however, we must interpret
these unpatented claims by giving words their broadest
reasonable meanings in their ordinary usage, taking into
account the written description found in the specification.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
As we have stated above, the appealed independent claims
recite the term “substantially amorphous.” By appellant’s own
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007