Appeal 2007-0796
Application 10/236,088
patent applications "not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art.'"
Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed.
Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). While Genuise refers
to bottom portion 32 and upper or lid portion 42 as components of a
retraction member 12, we find nothing in the ordinary and customary usages
of the terms "container" ("a thing that contains or can contain something"
(Webster's New World Dictionary 306 (David B. Guralnik ed., 2nd Coll. Ed.,
Simon & Schuster, Inc. 1984)) and "cap" ("cover or top" (Id. at 208)) that
would distinguish these recitations from bottom portion 32 and upper or lid
portion 42. Nor do we find anything in Appellant's Specification that would
indicate these terms should be read differently from their ordinary and
customary usages.
Appellant argues that one of ordinary skill in the art would not
understand a "retraction member" as being in the container art (App. Br. 15).
This argument is not persuasive because arguments that the alleged
anticipatory prior art is nonanalogous art or is not recognized as solving the
problem solved by the claimed invention are not germane to a rejection
under 35 U.S.C. § 102. In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA
1982). Further, while anticipation requires the disclosure of each and every
limitation of the claim at issue in a single prior art reference, it does not
require such disclosure in haec verba. In re Bode, 550 F.2d 656, 660, 193
USPQ 12, 16 (CCPA 1977).
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