Appeal No. 2004-2368
Application No. 09/395,854 Page 7
of 8 latches. In the examiner's example, four probing events
occur before the defect is located. The examiner acknowledges
that in the example, the entire first stage of eight latches is
not necessarily bypassed, but takes the position (answer, page 6)
that "bypassing at least a portion ‘bypasses’ the stage." The
examiner repeats this position (answer, page 7) that bypassing at
least a portion of the first stage constitutes bypassing the
first stage.
We begin our analysis with claim interpretation. Before
addressing the examiner's rejections based upon prior art, it is
an essential prerequisite that the claimed subject matter be
fully understood. Analysis of whether a claim is patentable over
the prior art begins with a determination of the scope of the
claim. The properly interpreted claim must then be compared with
the prior art. Claim interpretation must begin with the language
of the claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Accordingly, we will direct our attention to
appellants' claim 15 to derive an understanding of the scope and
content of the claim.
What we are dealing with in this case is the construction of
the limitations recited in the appealed claims. As stated by the
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