Appeal No. 1998-2983
Application No. 08/481,230
The basic dispute between appellants and the examiner is based upon the
definition of the term “window” in the claims. (See brief at page 12.) Appellants rely upon
the express definition in the specification and the examiner relies upon the ordinary usage
in the relevant field.
Before addressing the examiner's rejections based upon prior art, it is an essential
prerequisite 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). Accordingly, we will initially direct our
attention to appellants' claim 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 America
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