Appeal No. 2004-2090
Application No. 09/540,391
dictionary definition. In such a case, the inconsistent dictionary definition must
be rejected.” Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d at 1204,
64 USPQ2d at 1819 (Fed. Cir. 2002). (“[A] common meaning, such as one
expressed in a relevant dictionary, that flies in the face of the patent disclosure is
undeserving of fealty.”); Id. (citing Liebscher v. Boothroyd, 258 F.2d 948, 951,
119 USPQ 133, 135 (C.C.P.A. 1958) (“Indiscriminate reliance on definitions
found in dictionaries can often produce absurd results.”)).
The term “feature” has many definitions, however we find the definition “a
prominent or conspicuous part or characteristic”1 is consistent with the usage of
the term “feature” in appellant’s specification. (See for example page 1 and
example description of a feature in field 55 of figure 5). Thus, we find that the
scope of claim 15 includes describing a product’s characteristics and defining
tasks, which are associated with the characteristics of the product. We find that
claim 26 includes similar limitations.
Having determined the scope of the claims we next turn to the rejection
asserted by the examiner. In rejecting claims under 35 U.S.C. § 103, the
Examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). It is the burden of the examiner to establish why one having
ordinary skill in the art would have been led to the claimed invention by the
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