Appeal 2007-1677
Application 10/121,491
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
The analysis supporting obviousness should be made explicit and should
“identify a reason that would have prompted a person of ordinary skill in the
art to combine the elements” in the manner claimed. KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1731, 82 USPQ2d 1385, 1389 (2007).
Implicit in any review of the Examiner’s obviousness analysis is that the
claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1460 n.3, 43 USPQ2d 1030, 1035 n.3 (Fed. Cir. 1997). During
prosecution before the Examiner, claims are given their broadest reasonable
interpretation as they would ordinarily be used and understood by one of
ordinary skill in the art, taking into account any enlightenment or definition
found in the specification. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Particular embodiments appearing
in the Specification will not be read into the claims when the claim language
is broader than such embodiments, and the Examiner should only limit the
claim based on an express disclaimer of a broader definition. See Electro
Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054, 32 USPQ2d
1017, 1021 (Fed. Cir. 1994); and In re Bigio, 381 F.3d 1320, 1325,
72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004).
Applying the preceding legal principles to the construction of claim 1
on appeal, we determine that the broadest reasonable interpretation of the
language of claim 1 on appeal would include an elongate foam body with
longitudinally extending edges on opposite sides of a longitudinally
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