Appeal 2007-0757
Application 09/952,249
Further, as pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the claim.” In
re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). Therefore, we look to the limitations as recited and disputed in
independent claim 1.
Appellants argue that neither of the cited references teaches the
claimed “determining an estimate of the average inter-ridge line distance”
(Br. 3). We disagree with Appellants, and find that Bolle ‘895 clearly
discusses the use of the average inter-ridge distance at column 12. We find
that to use the average inter-ridge distance, it must have been determined.
Additionally, we find that retrieving the value from storage would also be a
“determining.” We note that the language of independent claim 1 does not
identify how the average inter-ridge distance is determined. The estimate
may be calculated, or determined from a stored reference table or any
known manner of determination. We find sufficient teaching and
suggestion in Bolle ‘895 to meet the recited language of independent claim
1. Therefore, Appellants' argument is not persuasive.
Appellants contend that the teachings of Bolle ‘895 are not sufficient
to teach or suggest determining an estimate of the average inter-ridge line
distance (Br. 4 and Reply Br. 1-3). We disagree with Appellants.
Appellants further contend that Bolle ‘895 must be an enabling reference
and that Bolle ‘895 is not enabling. Appellants contend that the relied upon
portions of Bolle ‘895 do not teach or suggest how to determine an estimate
of the average inter-ridge line distance (Br. 4). We do not find that Bolle
‘895 is non-enabling since we find that the use of a standard/reference value
would have been sufficient for the claimed invention. We find no express
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