Appeal No. 2002-0540 Page 3
Application No. 09/589,434
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the point of contention therebetween. The examiner asserts, "Feightner
teaches . . . a plurality of expansion slots (34, fig. 2) inherently capable of receiving
compact flash expansion cards. . . ." (Examiner's Answer at 3.) The appellants argue,
"[i]t is improper and in error for the Examiner to . . . equate a standard expansion slot to
a compact flash slot. " (Appeal Br. at 6.) In addressing the point of contention, the
Board conducts a two-step analysis. First, we construe the claims to determine their
scope. Second, we determine whether the construed claims are anticipated or would
have been obvious.
1. CLAIM CONSTRUCTION
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). "Claims are not interpreted in a vacuum, but are part of and are read in light
of the specification." Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1
USPQ2d 1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc. v. Monoclonal Anti-bodies,
Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir. 1986); In re Mattison, 509
F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975)).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007