Appeal 2007-1382
Application 10/334,871
two-fold; first it must be determined if the reference is within the field of the
inventor’s endeavor; if it is not, we determine whether the reference is
reasonably pertinent to the particular problem with which the inventors were
involved. See In re GPAC Inc., 57 F.3d 1573, 1577, 35 USPQ2d 1116, 1120
(Fed. Cir. 1995); and In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979).
During prosecution before the Examiner, the language of the claims is
given its broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other description contained in the specification.
See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997). Particular embodiments appearing in a specification will not be read
into the claims when the claim language is broader than such embodiments.
See Electro Med. Sys. S.A. v. Cooper Life Sciences Inc., 34 F.3d 1048, 1054,
32 USPQ2d 1017, 1021 (Fed. Cir. 1994). The claim should only be limited
based on an express disclaimer of a broader definition. See In re Bigio, 381
F.3d 1320, 1325, 72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that Jones is analogous prior art. We
determine that Appellants’ field of endeavor is roofing underlayments,
which is the same field of endeavor disclosed by Jones. See the
Specification 1:7-8, where Appellants disclose that “[m]ore particularly, the
present invention is the field of ‘roofing underlayments,’” and factual
finding (1) listed above. We find no reason to “narrowly define the field” as
urged by Appellants (Br. 9), especially when Appellants expressly define the
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