Appeal 2007-1366
Application 90/005,090
1 A preliminary issue is whether Claim 1 should be given a broad
2 construction leaving the claim open to components in addition to those
3 specifically recited.
4 The overall patentability issue is whether Patentee has demonstrated
5 that the Examiner’s decision that the subject matter of Claim 1 would have
6 been obvious is erroneous. There are three sub issues: (1) whether Gaylord,
7 Tanaka and Quaal are analogous art; (2) whether Gaylord, Tanaka and Quaal
8 are properly combinable; and (3) whether patentee has provided evidence of
9 secondary considerations sufficient to prove non-obvioiusness.
10 PRINCIPLES OF LAW
11 Claim Construction
12 Patent claims involved in a reexamination are ordinarily given the
13 broadest reasonable construction. In re Yamamoto, 740 F.2d 1569, 1571,
14 222 USPQ 934, 936 (Fed.Cir. 1984) (in banc). However, a narrowed
15 construction is appropriate where the patent has expired. Ex parte Papst-
16 Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986).
17 Obviousness
18 In evaluating obviousness under 35 U.S.C. § 103(a), the scope and
19 content of the prior art is determined, the differences between the prior art
20 and the claims are to be ascertained and the level of ordinary skill resolved.
21 Graham v. John Deere Co., 383 U.S 1, 15 (1966). The combination of
22 familiar elements according to known methods is likely obvious when the
23 combination does no more than the predictable results. KSR Int’l Co. v.
24 Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). The obviousness inquiry asks
25 whether the improvement is more than the use of prior art elements
26 according to their established functions. KSR, 127 S.Ct. at 1740. Secondary
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013