Appeal No. 2003-0493
Application No. 09/108,716
use of a window to frame elements is well known is insufficient to support a legal
conclusion of obviousness under 35 U.S.C. section 103(a)” and that the examiner
needs to explain why a person of ordinary skill in the art would be motivated to make
the combination of Thompson and the well known art. Before we consider the art used
in the rejection we must first determine the scope of the claim. Claims will be given
their broadest reasonable interpretation consistent with the specification, limitations
appearing in the specification will not be read into the claims. In re Etter 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985). In analyzing the scope of the claim, office
personnel must rely on the appellant’s disclosure to properly determine the meaning of
the terms used in the claims. Markman v Westview Instruments, 52 F3d 967, 980,
34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a
claim ‘is not to be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” (emphasis original) In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir. 2002) (citing
Intervet America Inc v. Kee-Vet Laboratories Inc. 12 USPQ2d 1474, 1476 (Fed. Cir.
1989)).
Appellants identify on page 4 of the brief that:
Each of the claims 31-50 recites, inter alia, “… placing a first window of a
first predetermined size over the first set of global elements from the primary list
to define a first set of local elements which is a subset of the first set of global
elements …” and “ … placing a second window of a second predetermined size
over the second set of global elements from the secondary list to define a
second set of local elements which is a subset of the second set of global
elements…”
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