Appeal 2006-3314
Application 09/761,322
Patentability begins with the legal question “what is the invention
claimed?” See Panduit v. Dennison Mfg. Co., 774 F.2d 1082, 1093, 227
USPQ 337, 344 (Fed. Cir.1985). During examination, patent claims must be
given their broadest reasonable interpretation consistent with the
specification. However, claim language cannot be read in a vacuum, but
instead must be read in light of the specification as it would be interpreted
by one of ordinary skill in the pertinent art. See In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir.1983). In our view, the Specification
clearly sets forth that which Appellants intended to encompass by the claim
language “three-dimensional image,” i.e., an image which itself is three-
dimensional such as an intaglio (see, e.g., Fig. 2), as opposed to a two-
dimensional image such as printed matter on a surface, even if given the
illusion of being three-dimensional.
Accordingly, we reverse the Examiner’s rejection of claims 1-13
under 35 U.S.C. § 103 because it is based on an erroneous interpretation of
the claim language.
REMAND TO THE EXAMINER
While we have not sustained the Examiner's rejections for the reasons
stated above, it appears to us that the propriety of rejections under 35 U.S.C.
§§ 102 and 103 should be evaluated by the Examiner in view of at least the
following additional references:
Gerstman Des. 298,180 Oct. 25, 1988
Concepcion Des. 298,280 Nov. 1, 1988
Tabor Des. 306,790 Mar. 27, 1990
Boehm US 4,948,602 Aug. 14 1990
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