Appeal No. 2006-2789
Application No. 10/215,217
pending claims must be “given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d
1664, 1667 (Fed. Cir. 2000). Although the structure of DE ‘297 identified as the
“adapter” does not match the adapter disclosed in appellants’ specification, the
term “adapter” as claimed is not so limited. “[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments...[C]laims may
embrace different subject matter than is illustrated in the specific embodiments in
the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1323, 75 USPQ2d
1321, 1334 (Fed. Cir. 2005) (citations and internal quotation marks omitted).
Moreover, we find ample evidence on this record that the skilled artisan
would have been motivated to apply the teachings of Clarke to the apparatus of
DE ‘297. At the outset, we are not persuaded by the examiner’s creative use of
graphics to illustrate the alleged feasibility of a wholesale replacement of the
“adapter” of DE ‘297 with Clarke’s “adapter” essentially for the reasons noted by
appellants [see answer, page 5]. We nonetheless conclude, however, that the
skilled artisan would have reasonably been motivated to provide power contacts
on the side of the “adapter” of DE ‘297 in view of the teachings of Clarke,
particularly in the event that electrical power is needed in addition to the adapter
connections. In this regard, Clarke teaches the advantage of providing power
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007