Appeal No. 1998-1722
Application No. 08/527,018
I. 35 U.S.C. § 102(e): Claims 1-15
A. Claim 1
To aid us in determining whether the examiner applied the
prior art correctly against the appealed claims, we must first
consider the scope and meaning of certain terms that appear in
appealed claim 1. Gechter v. Davidson, 116 F.3d 1454, 1457,
1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994). It is well settled that, in proceedings before the
United States Patent and Trademark Office (PTO), claims in an
application are to be given their broadest reasonable
interpretation, taking into account the written description
found in the specification. In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)(“During
independent claims separate and apart from each other.” (Appeal
brief filed Jul. 30, 1997, paper 15, p. 6.) Regarding product
claims 5, 10, and 13, however, the appellants do not provide any
argument as to why these product claims are separately
patentable relative to each other. Thus, as to these product
claims, we confine our discussion to appealed claim 5. See 37
CFR § 1.192(c)(7)(2003)(effective Apr. 21, 1995); In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002) (“If the brief fails to meet either requirement [as
provided under 37 CFR § 1.192(c)(7)], the Board is free to
select a single claim from each group of claims subject to a
common ground of rejection as representative of all claims in
that group and to decide the appeal of that rejection based
solely on the selected representative claim.”).
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