Appeal 2007-1538
Application 10/396,244
PRINCIPLES OF LAW
Office personnel may rely on Appellant’s 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.’” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed.
Cir. 2002) (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989)).
On the issue of obviousness the Supreme Court has recently stated that
“[t]he combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (U.S. 2007).
If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill. . .
. [A] court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.
Id. at 1740, 82 USPQ2d at 1396. “One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there existed at the time of the
invention a known problem for which there was an obvious solution encompassed
by the patent’s claims.” Id. at 1742, 82 USPQ2d at 1397.
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