Appeal No. 2007-0999
Application No. 10/600,280
35 U.S.C. § 102(b) over Sigler alone because Briggs is unnecessary to reach
all the limitations of the claims.
Appellants state that Sigler discloses a process in which the pacifier is
moved around in the sponge slit and thus does not positively engage it (Br.
14). However, we see nothing in the claim language which would restrict
the mobility of the apparatus, once inserted into the container. We remind
Appellants that claims are given their broadest reasonable interpretation
during patent prosecution. “Construing claims broadly during prosecution is
not unfair to the applicant . . . , because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” In re Am. Acad.
Sci. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 U.S.P.Q.2d 1827, 1830 (Fed.
Cir. 2004). Appellant has not explained why the skilled worker, in view of
the specification, would have interpreted “removably engaging” so
restrictively.
For claims 4, 7-11, and 24, which were not separately argued, we find
that the combination of Sigler in view of Briggs is proper, and affirm the
rejection under § 103. However, we designate the rejection of claims 4, 7-
11, and 24 as a new ground of rejection because of their dependence on
claim 1.
With regard to the rejection of claims 4, 7-11, and 24 over the
combination of Sigler in view of Briggs, we do not find Appellants’
argument persuasive that Sigler is non-analogous art (Br. 8-9). Even when
the prior art is not within the same field of endeavor, a reference may be still
properly combined when pertinent to the problem an inventor seeks to solve.
In re Clay, 966 F.2d 656, 658-9, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992).
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