Appeal No. 2005-0235 4
Application No. 09/969,291
The initial inquiry into determining the propriety of the examiner’s obviousness
rejection is to correctly construe the scope of the claimed subject matter. See Gechter v.
Davidson, 116 F.3d 1454, 1460 n.3, 43 USPQ2d 1030, 1035 n.3 (Fed. Cir. 1997); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. cir. 1994). In proceeding
before the U.S. Patent and Trademark Office (PTO), we give the words in claims the
broadest reasonable meaning in their ordinary usage, taking into account the written
description found in the specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997)(“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever enlightenment
by way of definitions or otherwise that may be afforded by the written description contained
in the applicant’s specification.”); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989)(“During patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow.”).
With the above broadest reasonable interpretation in mind, we turn to claim 1 which
is representative of the claims on appeal. The subject matter defined by claim 1 is directed
to “[a] multilayer insulation-coated electric conductor” which can be used in a variety of
electric machinery and tools, such as motors and generators. See claim 1, together with
page 1 of the specification. This multilayer insulation-coated electric conductor, according
to claim 1, comprises “a conductor with a plurality of layers of insulation-
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