Appeal 2006-3079
Application 10/708,033
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983). The only
element of claims 1 and 11 identified by Appellants as lacking in Dwyer is
the deck being divided into a first “suit” and a second “suit.” According to
Appellants, the two sets of alphabetic cards in Dwyer’s deck are of the same
suit, because the only difference between the two sets is the color of the
border design. (Appeal Br. 7) This position is not well taken.
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004)). Appellants’ Specification gives no
hint that the term “suit” is used in any manner other than the ordinary and
customary usage of this term (FF4) and, further, in characterizing the threat
and tool cards as being of two different suits (Specification [0005]), clearly
indicates that the term “suit” is not limited to the more specific definition,
that is, spades, clubs, hearts, and diamonds, but rather, is sufficiently broad
to encompass any group of cards forming a set or series.
Appellants concede that Dwyer’s deck includes two suits, but
characterizes the cards of the first suit as being “the same as the cards of the
second suit, with only a minor variance in border color” (Appeal Br. 8).
Appellants’ characterization of the border color variance as “minor” is not
supported by Dwyer. Moreover, Dwyer cites different colored borders as
merely one example of a “differentiating feature” to distinguish the cards to
permit them to be separated into two complete alphabetic sequences (FF3).
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