Appeal No. 2006-0235
Application 09/733,352
limitation in claim 11 which would result in a different determination than we made with respect
to claim 4.
Accordingly, we determine that the examiner has made out a prima facie case of
obviousness of the claimed method encompassed by argued claims 4 and 11, and appellants’
have not carried their burden of establishing otherwise.
We are also not convinced of error in the examiner’s position with respect to the other
appealed dependent claims argued by appellants that stand rejected over Knowles alone or over
the combined teachings of Knowles and Bice.
We first consider claim 33 and claims 16 and 34. The examiner finds with respect to
claim 33, that all of the components of the apparatus of Knowles are “operatively connected” to
the fiber, pointing out that a “specialized definition” for this phrase “is not of record” (answer,
pages 12-13), and appellants point to the disclosure “[f]or example, the tension in the fiber can
be monitored via a load cell . . . operatively connected to a pulley, which in turn contacts the
fiber” at page 4, ll. 2-4, of the specification, without further argument on the meaning of the
subject phrase (reply brief, pages 9-10).
We agree with the examiner. The term “operatively connected . . . is a general term
frequently used in patent drafting to reflect a functional relationship between claimed
components . . . [and generally] means the claimed components must be connected in a way to
perform a designated function.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems,
Inc., 381 F.3d 1111, 1118, 72 USPQ2d 1001, 1006 (Fed. Cir. 2004). We have considered this
term in the context of the language of claim 33 and the written description in the specification,
including the drawings, in giving it the broadest reasonable interpretation in ordinary usage in
context, mindful that a limitation or particular embodiment disclosed in the specification cannot
be read into the claim. See Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364, 70 USPQ2d at 1830;
Morris, 127 F.3d at 1054-55, 44 USPQ2d at 1027; Zletz, 893 F.2d at 321-22, 13 USPQ2d at
1322 (Fed. Cir. 1989); cf. Innova, 381 F.3d at 1115-20, 72 USPQ2d at 1004-08. The plain
language of dependent claim 33 simply requires “said monitoring step comprises” at least
“monitoring said tension via a load cell operatively connected to said fiber” without specifying
the manner in which the load cell is “operatively connected” to the fiber in order to monitor the
tension in the fiber. As pointed out by the examiner, no meaning for “operatively connected” is
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