Appeal No. 2007-0358
Application 10/873,477
13. When claims 10 and 11 were added, the applicants did not point out
how these claims are supported in the disclosure, as originally filed.
Principles of Law
“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324, 72
USPQ2d 1209, 1211 (Fed. Cir. 2004).
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Under 35 U.S.C. § 103(a), a claimed invention is unpatentable if the
differences between it and the prior art are “such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which the subject matter pertains.” The Supreme Court
of the United States has held that the factual inquiry into whether claimed subject
matter would have been obvious includes a determination of: (1) the scope and
content of the prior art; (2) the differences between the claimed subject matter and
the prior art; (3) the level of ordinary skill in the art; and (4) secondary
considerations (e.g., the problem solved) that may be indicia of (non)obviousness.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
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