Appeal No. 2004-1004
Application No. 10/011,074
We agree with the appellant on this issue. When read in
light of the specification, the recited term “flexible” would be
understood by one skilled in the relevant art to require an
elastomeric or polymeric material.4 Because the examiner does
not account for this limitation, no prima facie case of
anticipation can exist.5
Claims 1-5, 8, & 9: Elges
Elges describes a fishing lure including, inter alia, a
body 412, which may be composed of rubber (i.e., elastomer), and
a stationary weight 450 at least partially encapsulated within
the body. (Figure 4; column 3, lines 9-43.) The examiner
further determined (answer, page 4) that “[r]ubber is a common
flexible material...” Elges, therefore, describes, either
4 In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989)(“When the applicants state the meaning that the
claim terms are intended to have, the claims are examined with
that meaning, in order to achieve a complete exploration of the
applicant’s invention and its relation to the prior art.”); see
also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998)(“When the
specification explains and defines a term used in the claims,
without ambiguity or incompleteness, there is no need to search
further for the meaning of the term.”).
5 We decline to make an initial determination on whether
the subject matter of any of the appealed claims would have been
obvious over Welch, alone or in combination with other art,
within the meaning of 35 U.S.C. § 103(a). On remand, however,
the examiner is free to do so.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007