Appeal 2007-1468
Application 09/912,784
make the combination recited in the claims. From this it may
be determined whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the art – i.e.,
the understandings and knowledge of persons having ordinary
skill in the art at the time of the invention-support the legal
conclusion of obviousness. (internal citations omitted).
Id. at 988, 78 USPQ2d at 1337. To establish a prima facie case of
obviousness, the references being combined do not need to explicitly suggest
combining their teachings. See id. at 987-88, 78 USPQ2d at 1336-37 (“the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references”). “’The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art.’” Id. at
987-88, 78 USPQ2d at 1336 (quoting In re Kotzab, 217 F.3d 1365, 1370, 55
USPQ2d 1313, 1317 (Fed. Cir. 2000)).
In analyzing the scope of the claim, office personnel must rely on
Appellants’ disclosure to properly determine the meaning of the terms used
in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980, 34
USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a
word in a claim ‘is not to be confused with adding an extraneous limitation
appearing in the specification, which is improper’” (emphasis original). In
re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202,
1205, (Fed. Cir. 2002) (citing Intervet America Inc v. Kee-Vet Laboratories
Inc., 12 USPQ2d 1474, 1476 (Fed. Cir. 1989)
ANALYSIS
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