Appeal 2007-1267
Application 09-967617
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. … On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” [citations removed]
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)
Both anticipation under 35 U.S.C. §102 and obviousness under §103
are two-step inquiries, in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933, 69
USPQ2d 1283, 1286 (Fed. Cir. 2003). –
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states
that "the words of a claim are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005) (en banc) (citations omitted). The "ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." (Id. at 1313, 75
USPQ2d at 1326).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013