Appeal No. 1999-2509
Application 08/752,917
Appellant states in the brief (page 3) that the appealed independent claims are separately
patentable and that “all dependent claims stand or fall with the independent claim.” However,
we fail to find in the brief or reply brief in their entirety, separate arguments for claims 14 and 41.
Thus, we decide this appeal based on appealed claim 14. 37 CFR § 1.192(c)(7) (1997).
We reverse the ground of rejection based on Pelletier. We affirm the ground of rejection
based on Mackey because we agree with the examiner's conclusion that the claimed subject
matter would have been obvious over this reference, but denominate our affirmance as a new
ground of rejection under 37 CFR § 1.196(b) (1997), since our reliance on Mackey materially
differs from that of the examiner as set forth below and our position is not directly addressed by
any of appellant’s arguments in the brief or reply brief. See In re Eynde, 480 F.2d 1364, 1370-
71, 178 USPQ 470, 474-75 (CCPA 1973).
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
In order to consider the examiner’s application of prior art to appealed claim 14, we must
first interpret the claim in light of the written description in appellant’s specification as it would
be interpreted by one of ordinary skill in this art, see In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he 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.”), without reading into these claims any limitation or particular
embodiment which is disclosed in the specification. See In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978). Thus, the terms in the appealed claim must be given their ordinary meaning unless
another meaning is intended by appellant as established in the written description of the
2 The examiner makes the same statement as set forth above in note 1, at page 6 of the answer.
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