Appeal No. 2005-1830 3
Application No. 10/180,228
and boots.” (Claims 1 and 13). It is the Examiner’s position that “the naming of the
product does not define the method” and that the claim “fails to recite the manipulative
steps that define the method of forming such product.” (Answer, p. 5). Therefore,
according to the Examiner’s reasoning, Berger teaches the claimed process even
though there is no disclosure of forming any of the products recited in the markush
group of the claims. Berger forms a tobacco filter product (Fig. 6), a product which is
not found by the Examiner to be of the type recited in the markush group of the claims.
If the naming of the product genus in the claims serves to limit the claims, the rejection
fails to establish anticipation by Berger. “To anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or inherently.” In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
We cannot agree with the Examiner’s interpretation of the claim. What the
Examiner’s claim interpretation fails to consider is the claim as a whole. Every limitation
in the claim must be given effect rather than considering one in isolation from the
others. In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974). It
is true that the effect of a limitation may differ based on the nature of what is claimed.
For instance, in a claim directed to a product, a method step does not limit the claim
directly, it is analyzed for how it limits the structure and properties of the product. See
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)(“[I]t is the
patentability of the product claimed and not of the recited process steps which must be
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