Appeal 2007-1883
Application 10/469,203
1 It is important to note that "[t]he invention is, for purposes of the ‘written
2 description’ inquiry, whatever is now claimed.” Vas-Cath at 1564, 19 USPQ2d at
3 1117.
4 Section 112, second paragraph, is satisfied if a person skilled in the field of
5 the invention would reasonably understand the claim when read in the context of
6 the specification. Marley Mouldings Limited v. Mikron Industries, Inc., 417 F.3d
7 1356, 1359, 75 USPQ2d 1954, 1956 (Fed. Cir. 2005) (citing Union Pac. Res. Co.
8 v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed.
9 Cir. 2001) (the definiteness requirement set forth in § 112, paragraph 2 "focuses on
10 whether those skilled in the art would understand the scope of the claim when the
11 claim is read in light of the rest of the specification")); Miles Labs., Inc. v.
12 Shandon, 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (if the
13 claims "reasonably apprise those skilled in the art of the scope of the invention, §
14 112 demands no more"); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
15 (CCPA 1971) (the indefiniteness inquiry asks whether the claims "circumscribe a
16 particular area with a reasonable degree of precision and particularity").
17 The prior art may anticipate a claimed invention, and thereby render it
18 non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
19 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
20 (2003). Express anticipation occurs when the prior art expressly discloses each
21 limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a
22 prior art reference may anticipate when the claim limitations not expressly found in
23 that reference are nonetheless inherent in it.” Id.
24 In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
25 burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
26 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
5
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