Appeal No. 2004-1383
Application No. 09/658,389
legal conclusions, we adopt them as our own and add the
following comments for emphasis.2
I. 35 U.S.C. § 102(b): Claims 1-3, 10, 12, 13, 17, 20, & 21
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
representative 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
2 The appellants submit: “For the purposes of addressing
the rejections under 35 U.S.C. §103 and obviousness-type double
patenting, the grouping of the claims is: Claims 1-6, 8-10, 12,
13, 15, 17-22, 24-31 and 33-38 stand or fall together as a
group.” (Appeal brief filed Oct. 7, 2003, paper 22, p. 5.)
Accordingly, for rejection II, we select claim 4 as
representative; for rejection III, we select claim 15 as
representative; and for rejection IV, we select claim 1 as
representative. As to rejection I, the appellants do not
identify any claim grouping. Nor do they argue any particular
claim. We therefore confine our discussion of rejection I to
claim 1. 37 CFR § 1.192(c)(7)(2003)(effective Apr. 21, 1995).
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