Appeal No. 2001-1866 Page 5
Application No. 08/478,606
claims are not to be read into the independent claim from which they depend." Id. at
972, 50 USPQ2d at 1468 (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270,
1277, 35 USPQ2d 1035, 1041 (Fed. Cir. 1995).
Here, claim 4 depends from, and further limits, claim 3. Mores specifically, the
dependent claim recites that "the various power measurements include real power,
reactive power and apparent power. . . ." Because these specific power measurements
are stated in claim 4, these are not to be read into claim 3, from which claim 4 depends.
Giving the representative claim its broadest, reasonable construction, therefore, the
limitations merely require at least two measurements of power.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
prima facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person of
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