Appeal No. 1999-2380
Application No. 08/575,743 Page 6
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976)
Before addressing the examiner's rejections based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. As stated by the court in In re
Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998) "[t]he name of the game is the claim." Analysis of whether
a claim is patentable over the prior art under 35 U.S.C. § 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 1 to derive an understanding of the scope
and content thereof.
The examiner (answer, page 5) takes the position that
because the alternative term "or" is used in claim 1, "the system
need only determine whether a packet is associated with a
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007