Appeal 2007-0036
Application 10/699,452
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application.” Id. at
1313, 75 USPQ2d at 1326. The description in the specification can limit the
apparent breadth of a claim in two instances: (1) where the specification
reveals a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess; and (2), where the
specification reveals an intentional disclaimer, or disavowal, of claim scope
by the inventor. Id. at 1316, 75 USPQ2d at 1329.
References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); see also In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,
381 F.3d 1320, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).
ANALYSIS
The Examiner correctly shows where all the elements of claim 1
appear in the Ament and Bender prior art references. Ament does not
explicitly characterize the “waiting time” for a service (para. [0043]) as an
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