Appeal No. 2005-2657 Page 6
Application No. 09/898,497
Appellants respond (reply brief, page 2) that “[w]hile
Owensby may select the advertisement according to the location of
the wireless mobile terminal, Owensby does not condition the
subsidy on the location of the mobile terminal, as claimed.”
Appellants further asserts (id.) that “the determination of
whether to grant the subsidy in Owensby is based only on whether
the user agrees to receive the advertisement-not based on where
the user is located.” It is argued (reply brief, page 3) that
the concept of subsidized zones is entirely absent from Owensby,
and (reply brief, page 6) that “Applicant’s position has always
been that the ‘responsive to’ language clearly differentiates the
claimed invention from Owensby.”
Before addressing the examiner's rejection, 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 initially direct our attention
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