Appeal 2007-1247
Application 10/222,014
“hardware portion” as recited in claim 1 may also include software that runs
on the hardware.
We find that Appellants’ arguments are not commensurate with the
scope of instant claim 1. “An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989). Moreover, our reviewing court has repeatedly warned against
confining the claims to specific embodiments described in the specification.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
It therefore follows that the Examiner has not been shown to err in
rejecting claim 1 as being anticipated by Shah. We therefore affirm the
Examiner’s rejection of claim 1, and that of claims 2-5 and 7-11, which fall
with claim 1.
As an additional matter, even assuming the term “hardware” would be
interpreted by one of ordinary skill in the art as asserted by Appellants,
claim 1 must satisfy other criteria for patentability, including non-
obviousness. See Diamond v. Diehr, 450 U.S. 175, 191 (1980). In the
present case, the system of claim 1 would merely perform known functions
through the sole use of hardware rather than through the use of software or a
combination of hardware and software. The routine application of hardware
to the performance of known processes performed with the use of software
has typically been found to be obvious. See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)(“Accommodating … prior
art … to modern electronics would have been reasonably obvious to one of
ordinary skill in [the art]” because applying modern electronics to known
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