Appeal 2006-3406
Application 10/383,906
1 application disclosure as it would be interpreted by one possessing the
2 ordinary level of skill in the pertinent art. Id.
3 The examiner's focus during examination of claims for compliance
4 with the requirement for definiteness of 35 U.S.C. § 112, second paragraph,
5 is whether the claims meet the threshold requirements of clarity and
6 precision, not whether more suitable language or modes of expression are
7 available. Some latitude in the manner of expression and the aptness of
8 terms is permitted even though the claim language is not as precise as the
9 examiner might desire.
10 To support a rejection of a claim under 35 U.S.C. § 102, it must be
11 shown that each element of the claim is found, either expressly described or
12 under principles of inherency, in a single prior art reference. See Kalman v.
13 Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
14 1983).
15 On appeal, Appellant bears the burden of showing that the Examiner
16 has not established a legally sufficient basis for combining the teachings of
17 the applied prior art. Appellant may sustain this burden by showing that,
18 where the Examiner relies on a combination of disclosures, the Examiner
19 failed to provide sufficient evidence to show that one having ordinary skill
20 in the art would have done what Appellant did. United States v. Adams, 383
21 U.S. 39 (1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336
22 (Fed. Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
23 Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
24 2006).
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