Appeal 2007-0141
Application 10/654,324
The Examiner has made the following rejections:
1. Claims 7-16 under 35 U.S.C § 112(1) as lacking sufficient written
description.
2. Claims 7-16 under 35 U.S.C § 103(a) as unpatentable over
Lickfield in view of Ortega.
The initial inquiry into determining the propriety of the Examiner’s .
§ 112 and § 103(a) rejections is to correctly construe the scope of the
claimed subject matter. Thus, the first issue before us is: Would a person of
ordinary skill in the art at the time of the invention have recognized the
meaning of the phrase “wherein said filaments do not degrade at a
temperature between about 180°C and about 250°C”? We answer this
question in the negative.
In order to make a proper comparison between the claimed invention
and the prior art, the Examiner must first construe the language of the
claims. See In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994). See also, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987) (In making a
patentability determination, analysis must begin with the question, "what is
the invention claimed?" since "[c]laim interpretation, . . . will normally
control the remainder of the decisional process.") See Gechter v. Davidson,
116 F.3d 1454, 1460, 43 USPQ2d 1030, 1035 (Fed. Cir. 1997) (requiring
explicit claim construction as to any terms in dispute). During examination,
claims are given the broadest reasonable construction in light of the
Specification. See In re American Academy of Science Tech Center,
367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). If the scope
and breadth of the claims cannot be properly determined, then the claims
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