Appeal 2007-0965
Application 10/264,573
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005)
(citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992)). To
establish inherency, the extrinsic evidence “must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). Anticipation of a patent claim requires a
finding that the claim at issue “reads on” a prior art reference. Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed. Cir.
1999) (“In other words, if granting patent protection on the disputed claim
would allow the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also covers subject
matter not in the prior art.”) (internal citations omitted).
We begin our analysis by construing the claim term “utilization rate”
by applying the broadest reasonable interpretation consistent with the
Specification. See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1667 (Fed. Cir. 2000) (“during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification.”).
As pointed out by the Examiner, the Specification broadly discloses that “U
is a measure of the rate at which access operations are being performed (i.e.,
utilization) on storage 128 by users 156 …” (Specification 6, ¶ 0025).
Therefore, we agree with the Examiner that the recited “utilization rate”
broadly but reasonably reads on Burkes’ disclosure of a data access
frequency policy where data is migrated based upon how often the data is
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013