Ex Parte Shang - Page 5

                Appeal 2007-1281                                                                             
                Application 10/104,386                                                                       
           1          8.  Zeng further discloses an embodiment whereby  “…in FIG.                            
           2    14, two adhesive layers 530 are used, rather than the single adhesive                        
           3    layer that would ordinarily attach the slider 240 to the gimbaled                            
           4    region 370 of the flexure.”  (col. 11, ll. 8-11).                                            
           5                                                                                                 
           6                              PRINCIPLES OF LAW                                                  
           7          “A claim is anticipated only if each and every element as set forth in                 
           8    the claim is found, either expressly or inherently described, in a single prior              
           9    art reference.”  Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d                    
          10    628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).  Analysis of whether a                       
          11    claim is patentable over the prior art under 35 U.S.C. § 102 begins with a                   
          12    determination of the scope of the claim.  We determine the scope of the                      
          13    claims in patent applications not solely on the basis of the claim language,                 
          14    but upon giving claims their broadest reasonable construction in light of the                
          15    specification as it would be interpreted by one of ordinary skill in the art.  In            
          16    re Am. Acad. of  Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,                       
          17    1830 (Fed. Cir. 2004).  The properly interpreted claim must then be                          
          18    compared with the prior art.                                                                 
          19          Claims are given their broadest reasonable construction “in light of                   
          20    the specification as it would be interpreted by one of ordinary skill in the                 
          21    art.”  In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364, 70 USPQ2d at                    
          22    1830.                                                                                        
          23                                                                                                 





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