Appeal 2007-1308
Application 10/097,398
1 PRINCIPLES OF LAW
2 We begin with the language of the claims. The general rule is that terms in
3 the claim are to be given their ordinary and accustomed meaning. Johnson
4 Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989, 50 USPQ2d 1607, 1610
5 (Fed. Cir. 1999). In the USPTO, claims are construed giving their broadest
6 reasonable interpretation.
7 [T]he Board is required to use a different standard for construing
8 claims than that used by district courts. We have held that it is error
9 for the Board to “appl[y] the mode of claim interpretation that is used
10 by courts in litigation, when interpreting the claims of issued patents
11 in connection with determinations of infringement and validity.” In re
12 Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320 (Fed. Cir. 1989); accord
13 In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023 (Fed. Cir. 1997)
14 (“It would be inconsistent with the role assigned to the PTO in issuing
15 a patent to require it to interpret claims in the same manner as judges
16 who, post-issuance, operate under the assumption the patent is
17 valid.”). Instead, as we explained above, the PTO is obligated to give
18 claims their broadest reasonable interpretation during examination.
19 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830
20 (Fed. Cir. 2004).
21
22 A claimed invention is unpatentable if the differences between it and the prior
23 art are “such that the subject matter as a whole would have been obvious at the
24 time the invention was made to a person having ordinary skill in the art.” 35
25 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing
26 Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham, the Court held
27 that that the obviousness analysis begins with several basic factual inquiries: “[(1)]
28 the scope and content of the prior art are to be determined; [(2)] differences
29 between the prior art and the claims at issue are to be ascertained; and [(3)] the
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