Appeal No. 2006-0367
Application No. 10/353,506
3. ALLEGED DISINCENTIVE TO DENSIFY
The appellants argue that "one skilled in the art would be skeptical about
densifying the material since one skilled in the art would believe that densifying it would
have made it more difficult for the underlying material to escape." (Appeal Br. at 9.) In
addressing the point of contention, we conduct a two-step analysis. First, we construe
the representative claim at issue to determine its scope. Second, we determine
whether the subject matter of the construed claim would have been obvious.
a. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000)). Furthermore, "[u]nless the steps of a method actually recite an order, the steps
are not ordinarily construed to require one." Interactive Gift Express Inc. v. Compuserve
Inc., 256 F.3d 1323, 1342, 59 USPQ2d 1401, 1416 (Fed. Cir. 2001) (citing Loral
Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322, 50 USPQ2d 1865, 1870 (Fed. Cir.
1999)).
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