Appeal 2006-3020
Application 10/109,374
indication of the scope of subject matter embraced by the
claim. This ground finds its basis in the second paragraph of
section 112, the rationale for which was discussed by us
recently in In re Hammack, 427 F.2d 1378, 57 C.C.P.A. 1225
(1970). The second is that the language is so broad that it
causes the claim to have a potential scope of protection
beyond that which is justified by the specification disclosure.
This ground of rejection is now recognized as stemming
from the requirements of the first paragraph of 35 U.S.C. §
112. The merits of the ‘functional’ language in the claim
before us must be tested in the light of these two
requirements alone.
In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971)
(internal citations omitted).
Regarding the breadth of a claim and its relationship to § 112, ¶ 2, see
In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 599-600 (CCPA 1971),
cited with approval in Union Pacific Resources Co. v. Chesapeake Energy
Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir. 2001)
(“breadth is not to be equated with indefiniteness, as we have said many
times”).
Motivation to combine two references “may be found in implicit
factors, such as ‘knowledge of one of ordinary skill in the art, and [what] the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art’.” Alza Corp. v. Mylan Labs., 464 F.3d 1286,
1291, 80 USPQ2d 1001, 1004 (Fed. Cir. 2006) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006)). See also KSR Int’l
v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385, 1396 (2007) (citing with
approval In re Kahn, 441 F.3d at 988, 78 USPQ2d at 1336).
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013