Appeal 2007-1828
Application 10/772,811
needs, failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Id., at 17-18, 148 USPQ at 467.
While the sequence of these questions might be reordered in any particular case,
the factors continue to define the inquiry that controls. If a court, or patent
examiner, conducts this analysis and concludes the claimed subject matter was
obvious, the claim is invalid or unpatentable under §103. See KSR Int’l v. Teleflex
Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1388 (2007).
All words in a claim must be considered in judging the patentability of that
claim against the prior art. If no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become obvious--the claim
becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970). Our analysis of the claims indicates that considerable speculation as
to meaning of the terms employed and assumptions as to the scope of such claims
needs to be made. A rejection under 35 U.S.C. § 103 should not be based on such
speculations and assumptions. In re Steele, 305 F.2d 859, 862, 134 USPQ 292,
295 (CCPA 1962); Ex parte Head, 214 USPQ 551 (Bd. Pat. App. & Int. 1981).
Section 112, second paragraph, is satisfied if a person skilled in the field of
the invention would reasonably understand the claim when read in the context of
the specification. Marley Mouldings Limited v Mikron Industries, Inc., 417 F.3d
1356, 1359, 75 USPQ2d 1954, 1956 (Fed. Cir. 2005) (citing Union Pac. Res. Co.
v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed.
Cir. 2001) (the definiteness requirement set forth in § 112, ¶ 2 focuses on whether
those skilled in the art would understand the scope of the claim when the claim is
read in light of the rest of the specification)); Miles Labs., Inc. v. Shandon, 997
F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (if the claims "reasonably
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013