Appeal 2006-2867
Application 10/771,969
It is axiomatic that admitted prior art in an applicants’ specification
may be used in determining the patentability of the claimed invention. See
In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975).
During prosecution before the Examiner, the claim language must be given
the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the specification. See In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997). The Patent & Trademark Office
should only limit the claim language based on an express disclaimer of a
broader definition. See In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209,
1210-11 (Fed. Cir. 2004). The discovery of the optimum of a known
variable is normally obvious. See In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990); and In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955).
Applying these legal principles to the factual findings in the record of
this appeal, we determine that the Examiner has established a prima facie
case of obviousness in view of the evidence as a whole. Giving the broadest
reasonable meaning to the term “wet wipe” as defined in Appellants’
Specification (see factual finding (2) listed above), we determine that this
term includes wipes that become wet during use. Accordingly, we agree
with the Examiner’s claim construction that the term “wet wipes” as used in
claim 81 on appeal includes the wipes of Gordon that become wet during use
by a slight pressure breaking the emulsion (Answer 5; see Gordon, col. 4, ll.
3-22, and col. 5, ll. 17-20).
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