Appeal No. 2003-0503 6
Application No. 09/687,894
driven and not a fair reading of the Metz patent, that the examiner has failed to appreciate
that appellant may be his own lexicographer in defining what constitutes a “ballast” as
presently claimed, and that Metz does not teach that closure member 52 functions as a
ballast member. It is thus apparent that the dispositive issue in regard to the examiner’s
anticipation rejection of claim 1 is whether closure member 52 of Metz may be regarded
as a “ballast member” within the meaning of that term as used in appellant’s claims.
It is true that the disclosed purpose of appellant’s ballast member is to
counterbalance the “lift” of an associated balloon (specification, page 3, lines 24-28), and
that the closure member 52 of Metz is disclosed as being for the purpose of containing
sand within the cavity formed by the balloon holder 50 and the closure member. However,
anticipation by a prior art reference does not require either the inventive concept of the
claimed subject matter or recognition of inherent properties that may be possessed by the
reference3 or that the reference teach what the applicant is claiming, but only that the
claim on appeal “read on” something disclosed in the reference, i.e., all limitations of the
claim are found in the reference.4 Moreover, in proceeding before it, the Patent and
Trademark Office applies to the verbiage of claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of ordinary skill in
3Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
4Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007