Appeal 2006-2874
Application 09/888,044
We have considered Appellants’ arguments for patentability,
however, we find that the claimed invention would have been obvious to one
of ordinary skill in the art within the meaning of § 103 in view of the applied
prior art for the reasons set forth in the Answer.
As pointed out by the Examiner, Appellants attempt to distinguish
their invention over the cited references by relying on features which are not
recited in the claims. See Panduit v. Dennison Mfg. Co., 774 F.2d 1082,
1093, 227 USPQ 337, 344 (Fed. Cir. 1985) (Patentability begins with the
legal question “what is the invention claimed?”) According to Appellants:
Claims 1, 11 and 17 all require that the channel members
be made from a metal. All of the claims further require that the
first and second channel members form the exterior vertical
edges of the shutter. Thus, the exterior vertical edges of the
shutter are made from a metal.
Br. 2.
As noted by the Examiner, Appellants’ claims are not as limited as
Appellants suggest. Contrary to Appellants’ assertion, the claimed invention
is not directed to a shutter having "exposed areas made from metal" or to
"metal channel members that form exterior edges of the shutter" (Answer 7).
Rather, Appellants’ claims are broadly drafted to recite channel members
having a U-shaped cross section and being made of metal.1 Thus, we are in
1 The claims recite, in relevant part:
each of said channel members having a U-shaped cross-section
and being made from a metal, . . . the first and second channel
members forming exterior vertical edges of the shutter (Claim
1).
4
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